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

Title 37—Patents,
Trademarks, and
Copyrights
Part
CHAPTER I—United States Patent and Trademark Office, De-

partment of Commerce ...................................................... 1
CHAPTER II—U.S. Copyright Office, Library of Congress ....... 201
CHAPTER III—Copyright Royalty Board, Library of Congress 301
CHAPTER IV—Assistant Secretary for Technology Policy,
Department of Commerce .................................................. 401
CHAPTER V—Under Secretary for Technology, Department
of Commerce ...................................................................... 501
ehiers on DSK5VPTVN1PROD with CFR
VerDate Sep<11>2014 13:45 Oct 04, 2016 Jkt 238147 PO 00000 Frm 00011 Fmt 8008 Sfmt 8008 Y:\SGML\238147.XXX 238147
CHAPTER I—UNITED STATES PATENT AND
TRADEMARK OFFICE, DEPARTMENT OF
COMMERCE
EDITORIAL NOTE: Chapter I—United States Patent and Trademark Office, Department of
Commerce, Subchapter A—General, contains patent and trademark regulations. Subchapter
A has been restructured to allow parts pertaining to patent regulations and trademark regu-
lations to be grouped separately. For further explanation see This Title, page ix.
SUBCHAPTER A—GENERAL
PATENTS
Part Page
1 Rules of practice in patent cases ............................. 5
3 Assignment, recording and rights of assignee ......... 216
4 Complaints regarding invention promoters ............ 224
5 Secrecy of certain inventions and licenses to ex-
port and file applications in foreign countries ..... 225
Index I—Rules relating to patents .......................... 235
TRADEMARKS
2 Rules of practice in trademark cases ...................... 261
6 Classification of goods and services under the
Trademark Act ..................................................... 348
7 Rules of practice in filings pursuant to the pro-
tocol relating to the Madrid agreement con-
cerning the international registration of marks .. 351
Index II—Rules relating to trademarks .................. 365
PRACTICE BEFORE THE PATENT AND TRADEMARK OFFICE
10 [Reserved]
11 Representation of others before the United States
Patent and Trademark Office ............................... 387
15–15a [Reserved]
41 Practice before the Patent Trial and Appeal Board 452
42 Trial practice before the Patent Trial and Appeal
Board .................................................................... 484
90 Judicial review of Patent Trial and Appeal Board

decisions ............................................................... 511
37 CFR Ch. I (7–1–16 Edition)
Index III—Rules relating to practice before the

Patent and Trademark Office ............................... 513
SUBCHAPTER B—ADMINISTRATION
100–101 [Reserved]
102 Disclosure of government information ................... 519
104 Legal processes ....................................................... 543
SUBCHAPTER C—PROTECTION OF FOREIGN MASK WORKS
150 Requests for Presidential proclamations pursuant

to 17 U.S.C. 902(a)(2) ............................................. 548
151–199 [Reserved]
SUBCHAPTER A—GENERAL
PATENTS 1.28 Refunds when small entity status is

later established; how errors in small en-
tity status are excused.
PART 1—RULES OF PRACTICE IN 1.29 Micro entity status.
PATENT CASES
Subpart B—National Processing Provisions
Subpart A—General Provisions PROSECUTION OF APPLICATION AND
APPOINTMENT OF ATTORNEY OR AGENT
GENERAL INFORMATION AND CORRESPONDENCE
1.31 Applicant may be represented by one or
Sec. more patent practitioners or joint inven-
1.1 Addresses for non-trademark cor- tors.
respondence with the United States Pat- 1.32 Power of attorney.
ent and Trademark Office. 1.33 Correspondence respecting patent ap-
1.2 Business to be transacted in writing. plications, reexamination proceedings,
1.3 Business to be conducted with decorum and other proceedings.
and courtesy. 1.34 Acting in a representative capacity.
1.4 Nature of correspondence and signature 1.36 Revocation of power of attorney; with-
requirements. drawal of patent attorney or agent.
1.5 Identification of patent, patent applica-
tion, or patent-related proceeding. WHO MAY APPLY FOR A PATENT
1.6 Receipt of correspondence. 1.41 Inventorship.
1.7 Times for taking action; Expiration on 1.42 Applicant for patent.
Saturday, Sunday or Federal holiday. 1.43 Application for patent by a legal rep-
1.8 Certificate of mailing or transmission. resentative of a deceased or legally inca-
1.9 Definitions. pacitated inventor.
1.10 Filing of correspondence by Priority 1.44 [Reserved]
Mail Express®. 1.45 Application for patent by joint inven-
tors.
RECORDS AND FILES OF THE PATENT AND 1.46 Application for patent by an assignee,
TRADEMARK OFFICE obligated assignee, or a person who oth-
1.11 Files open to the public. erwise shows sufficient proprietary inter-
1.12 Assignment records open to public in- est in the matter.
spection. 1.47 [Reserved]
1.48 Correction of inventorship pursuant to
1.13 Copies and certified copies.
35 U.S.C. 116 or correction of the name or
1.14 Patent applications preserved in con-
order of names in a patent application,
fidence.
other than a reissue application.
1.15 Requests for identifiable records.
THE APPLICATION
FEES AND PAYMENT OF MONEY
1.51 General requisites of an application.
1.16 National application filing, search, and 1.52 Language, paper, writing, margins,
examination fees. compact disc specifications.
1.17 Patent application and reexamination 1.53 Application number, filing date, and
processing fees. completion of application.
1.18 Patent post allowance (including issue) 1.54 Parts of application to be filed to-
fees. gether; filing receipt.
1.19 Document supply fees. 1.55 Claim for foreign priority.
1.20 Post issuance fees. 1.56 Duty to disclose information material
1.21 Miscellaneous fees and charges. to patentability.
1.22 Fees payable in advance. 1.57 Incorporation by reference.
1.23 Methods of payment. 1.58 Chemical and mathematical formulae
1.24 [Reserved] and tables.
1.25 Deposit accounts. 1.59 Expungement of information or copy of
1.26 Refunds. papers in application file.
1.27 Definition of small entities and estab- 1.60–162 [Reserved]
lishing status as a small entity to permit
OATH OR DECLARATION
payment of small entity fees; when a de-
termination of entitlement to small enti- 1.63 Inventor’s oath or declaration.
ty status and notification of loss of enti- 1.64 Substitute statement in lieu of an oath
tlement to small entity status are re- or declaration.
quired; fraud on the Office. 1.66 Statements under oath.
Pt. 1 37 CFR Ch. I (7–1–16 Edition)
1.67 Supplemental oath or declaration. 1.114 Request for continued examination.
1.68 Declaration in lieu of oath.
1.69 Foreign language oaths and declara- AMENDMENTS
tions. 1.115 Preliminary amendments.
1.70 [Reserved] 1.116 Amendments and affidavits or other
evidence after final action and prior to
SPECIFICATION
appeal.
1.71 Detailed description and specification 1.117–1.119 [Reserved]
of the invention. 1.121 Manner of making amendments in ap-
1.72 Title and abstract. plications.
1.73 Summary of the invention. 1.122–1.124 [Reserved]
1.74 Reference to drawings. 1.125 Substitute specification.
1.75 Claim(s). 1.126 Numbering of claims.
1.76 Application data sheet. 1.127 Petition from refusal to admit amend-
1.77 Arrangement of application elements. ment.
1.78 Claiming benefit of earlier filing date
and cross-references to other applica- TRANSITIONAL PROVISIONS
tions. 1.129 Transitional procedures for limited ex-
1.79 Reservation clauses not permitted. amination after final rejection and re-
striction practice.
THE DRAWINGS
1.81 Drawings required in patent applica- AFFIDAVITS OVERCOMING REJECTIONS
tion. 1.130 Affidavit or declaration of attribution
1.83 Content of drawing. or prior public disclosure under the
1.84 Standards for drawings. Leahy-Smith America Invents Act.
1.85 Corrections to drawings. 1.131 Affidavit or declaration of prior inven-
1.88 [Reserved] tion or to disqualify commonly owned
patent or published application as prior
MODELS, EXHIBITS, SPECIMENS
art.
1.91 Models or exhibits not generally admit- 1.132 Affidavits or declarations traversing
ted as part of application or patent. rejections or objections.
1.92 [Reserved]
1.93 Specimens. INTERVIEWS
1.94 Return of models, exhibits or speci- 1.133 Interviews.
mens.
1.95 Copies of exhibits. TIME FOR REPLY BY APPLICANT;
1.96 Submission of computer program list- ABANDONMENT OF APPLICATION
ings. 1.134 Time period for reply to an Office ac-
INFORMATION DISCLOSURE STATEMENT tion.
1.135 Abandonment for failure to reply
1.97 Filing information disclosure state- within time period.
ment. 1.136 Extensions of time.
1.98 Content of information disclosure 1.137 Revival of abandoned application, or
statement. terminated or limited reexamination
1.99 [Reserved] prosecution.
1.138 Express abandonment.
EXAMINATION OF APPLICATIONS 1.139 [Reserved]
1.101 [Reserved]
1.102 Advancement of examination. JOINDER OF INVENTIONS IN ONE APPLICATION;
RESTRICTION
1.103 Suspension of action by the Office.
1.104 Nature of examination. 1.141 Different inventions in one national
1.105 Requirements for information. application.
1.106–1.109 [Reserved] 1.142 Requirement for restriction.
1.109 Effective filing date of a claimed in- 1.143 Reconsideration of requirement.
vention under the Leahy-Smith America 1.144 Petition from requirement for restric-
Invents Act. tion.
1.110 Inventorship and ownership of the sub- 1.145 Subsequent presentation of claims for
ject matter of individual claims. different invention.
1.146 Election of species.
ACTION BY APPLICANT AND FURTHER
CONSIDERATION DESIGN PATENTS
1.111 Reply by applicant or patent owner to 1.151 Rules applicable.
a non-final Office action. 1.152 Design drawings.

1.112 Reconsideration before final action. 1.153 Title, description and claim, oath or
1.113 Final rejection or action. declaration.
U.S. Patent and Trademark Office, Commerce Pt. 1
1.154 Arrangement of application elements 1.291 Protests by the public against pending
in a design application. applications.
1.155 Expedited examination of design appli- 1.292 [Reserved]
cations. 1.293–1.297 [Reserved]
PLANT PATENTS REVIEW OF PATENT AND TRADEMARK OFFICE
1.161 Rules applicable. DECISIONS BY COURT
1.162 Applicant, oath or declaration. 1.301–1.304 [Reserved]
1.163 Specification and arrangement of ap-
plication elements in a plant application. ALLOWANCE AND ISSUE OF PATENT
1.164 Claim.
1.311 Notice of allowance.
1.165 Plant drawings.
1.166 Specimens. 1.312 Amendments after allowance.
1.167 Examination. 1.313 Withdrawal from issue.
1.314 Issuance of patent.
REISSUES 1.315 Delivery of patent.
1.316 Application abandoned for failure to
1.171 Application for reissue.
pay issue fee.
1.172 Reissue applicant.
1.173 Reissue specification, drawings, and 1.317–1.318 [Reserved]
amendments. DISCLAIMER
1.174 [Reserved]
1.175 Inventor’s oath or declaration for a re- 1.321 Statutory disclaimers, including ter-
issue application. minal disclaimers.
1.176 Examination of reissue.
1.177 Issuance of multiple reissue patents. CORRECTION OF ERRORS IN PATENT
1.178 Original patent; continuing duty of ap- 1.322 Certificate of correction of Office mis-
plicant. take.
1.179 [Reserved] 1.323 Certificate of correction of applicant’s
PETITIONS AND ACTION BY THE DIRECTOR mistake.
1.324 Correction of inventorship in patent,
1.181 Petition to the Director. pursuant to 35 U.S.C. 256.
1.182 Questions not specifically provided 1.325 Other mistakes not corrected.
for.
1.183 Suspension of rules. ARBITRATION AWARDS
1.184 [Reserved]
1.331–1.334 [Reserved]
APPEAL TO THE PATENT TRIAL AND APPEAL 1.335 Filing of notice of arbitration awards.
BOARD
AMENDMENT OF RULES
1.191 Appeal to Patent Trial and Appeal
Board. 1.351 Amendments to rules will be pub-
1.192–1.196 [Reserved] lished.
1.197 Termination of proceedings. 1.352 [Reserved]
1.198 Reopening after a final decision of the
Patent Trial and Appeal Board. MAINTENANCE FEES
1.362 Time for payment of maintenance
PUBLICATION OF APPLICATIONS. fees.
1.211 Publication of applications. 1.363 Fee address for maintenance fee pur-
1.213 Nonpublication request. poses.
1.215 Patent application publication. 1.366 Submission of maintenance fees.
1.217 Publication of a redacted copy of an 1.377 Review of decision refusing to accept
application. and record payment of a maintenance fee
1.219 Early publication. filed prior to expiration of patent.
1.221 Voluntary publication or republica- 1.378 Acceptance of delayed payment of
tion of patent application publication. maintenance fee in expired patent to re-
instate patent.
MISCELLANEOUS PROVISIONS
1.248 Service of papers; manner of service; Subpart C—International Processing
proof of service in cases other than inter- Provisions
ferences and trials.
1.251 Unlocatable file. GENERAL INFORMATION
1.401 Definitions of terms under the Patent
PREISSUANCE SUBMISSIONS AND PROTESTS BY
Cooperation Treaty.
THIRD PARTIES
1.412 The United States Receiving Office.

1.290 Submissions by third parties in appli- 1.413 The United States International
cations. Searching Authority.
1.414 The United States Patent and Trade- 1.472 Changes in person, name, or address of
mark Office as a Designated Office or applicants and inventors.
Elected Office.
1.415 The International Bureau. UNITY OF INVENTION
1.416 The United States International Pre- 1.475 Unity of invention before the Inter-
liminary Examining Authority. national Searching Authority, the Inter-
1.417 Submission of translation of international Preliminary Examining Author-
national publication. ity and during the national stage.
1.419 Display of currently valid control 1.476 Determination of unity of invention
number under the Paperwork Reduction before the International Searching Au-
Act. thority.
1.477 Protest to lack of unity of invention
WHO MAY FILE AN INTERNATIONAL
before the International Searching Au-
APPLICATION
thority.
1.421 Applicant for international applica-
tion. INTERNATIONAL PRELIMINARY EXAMINATION
1.422 Legal representative as applicant in 1.480 Demand for international preliminary
an international application. examination.
1.423 [Reserved] 1.481 Payment of international preliminary
1.424 Assignee, obligated assignee, or person examination fees.
having sufficient proprietary interest as 1.482 International preliminary examina-
applicant in an international application fees.
tion. 1.484 Conduct of international preliminary
examination.
THE INTERNATIONAL APPLICATION 1.485 Amendments by applicant during
1.431 International application require- international preliminary examination.
ments. 1.488 Determination of unity of invention
1.432 Designation of States by filing an before the International Preliminary Ex-
international application. amining Authority.
1.433 Physical requirements of inter- 1.489 Protest to lack of unity of invention
national application. before the International Preliminary Ex-
1.434 The request. amining Authority.
1.435 The description.
NATIONAL STAGE
1.436 The claims.
1.437 The drawings. 1.491 National stage commencement, entry,
1.438 The abstract. and fulfillment.
1.492 National stage fees.
FEES 1.494 Entering the national stage in the
1.445 International application filing, proc- United States of America as a Des-
essing and search fees. ignated Office.
1.446 Refund of international application 1.495 Entering the national stage in the
filing and processing fees. United States of America.
1.496 Examination of international applica-
PRIORITY tions in the national stage.
1.497 Inventor’s oath or declaration under 35
1.451 The priority claim and priority docu-
U.S.C. 371(c)(4).
ment in an international application.
1.499 Unity of invention during the national
1.452 Restoration of right of priority.
stage.
REPRESENTATION
Subpart D—Ex Parte Reexamination of
1.455 Representation in international appli- Patents
cations.
CITATION OF PRIOR ART AND WRITTEN
TRANSMITTAL OF RECORD COPY STATEMENTS
1.461 Procedures for transmittal of record 1.501 Citation of prior art and written state-
copy to the International Bureau. ments in patent files.
1.502 Processing of prior art citations dur-
TIMING
ing an ex parte reexamination proceeding.
1.465 Timing of application processing based
on the priority date. REQUEST FOR Ex Parte REEXAMINATION
1.468 Delays in meeting time limits. 1.510 Request for ex parte reexamination.
1.515 Determination of the request for ex
AMENDMENTS
parte
1.471 Corrections and amendments during 1.520 Ex parte reexamination at the initia-
international processing. tive of the Director.
Ex Parte REEXAMINATION 1.705 Patent term adjustment determina-
1.525 Order for ex parte reexamination. tion.
1.530 Statement by patent owner in ex parte
EXTENSION OF PATENT TERM DUE TO
reexamination; amendment by patent
REGULATORY REVIEW
owner in ex parte or inter partes reexam-
ination; inventorship change in ex parte 1.710 Patents subject to extension of the
or inter partes reexamination. patent term.
1.535 Reply by third party requester in ex 1.720 Conditions for extension of patent
parte reexamination. term.
1.540 Consideration of responses in ex parte 1.730 Applicant for extension of patent
reexamination.
term; signature requirements.
1.550 Conduct of ex parte reexamination pro-
ceedings. 1.740 Formal requirements for application
1.552 Scope of reexamination in ex parte re- for extension of patent term; correction
examination proceedings. of informalities.
1.555 Information material to patentability 1.741 Complete application given a filing
in ex parte reexamination and inter partes date; petition procedure.
reexamination proceedings. 1.750 Determination of eligibility for exten-
1.560 Interviews in ex parte reexamination sion of patent term.
proceedings. 1.760 Interim extension of patent term
1.565 Concurrent office proceedings which under 35 U.S.C. 156(e)(2).
include an ex parte reexamination pro- 1.765 Duty of disclosure in patent term ex-
ceeding. tension proceedings.
Ex Parte REEXAMINATION CERTIFICATE 1.770 Express withdrawal of application for
extension of patent term.
1.570 Issuance of ex parte reexamination cer- 1.775 Calculation of patent term extension
tificate after ex parte reexamination pro- for a human drug, antibiotic drug or
ceedings. human biological product.
1.776 Calculation of patent term extension
Subpart E—Supplemental Examination of for a food additive or color additive.
Patents 1.777 Calculation of patent term extension
1.601 Filing of papers in supplemental ex- for a medical device.
amination. 1.778 Calculation of patent term extension
1.605 Items of information. for an animal drug product.
1.610 Content of request for supplemental 1.779 Calculation of patent term extension
examination. for a veterinary biological product.
1.615 Format of papers filed in a supple- 1.780 Certificate or order of extension of
mental examination proceeding. patent term.
1.620 Conduct of supplemental examination 1.785 Multiple applications for extension of
proceeding. term of the same patent or of different
1.625 Conclusion of supplemental examina- patents for the same regulatory review
tion; publication of supplemental exam- period for a product.
ination certificate; procedure after con-
1.790 Interim extension of patent term
clusion.
under 35 U.S.C. 156(d)(5).
Subpart F—Adjustment and Extension of 1.791 Termination of interim extension
Patent Term granted prior to regulatory approval of a
product for commercial marketing or
ADJUSTMENT OF PATENT TERM DUE TO use.
EXAMINATION DELAY
1.701 Extension of patent term due to exam-
Subpart G—Biotechnology Invention
ination delay under the Uruguay Round Disclosures
Agreements Act of 1999 (original applica-
DEPOSIT OF BIOLOGICAL MATERIAL
tions, other than designs, filed on or
after June 8, 1995, and before May 29, 1.801 Biological material.
2000). 1.802 Need or Opportunity to make a de-
1.702 Grounds for adjustment of patent term posit.
due to examination delay under the Pat- 1.803 Acceptable depository.
ent Term Guarantee Act of 1999 (original
1.804 Time of making an original deposit.
applications, other than designs, filed on
1.805 Replacement or supplement of deposit.
or after May 29, 2000).
1.703 Period of adjustment of patent term 1.806 Term of deposit.
due to examination delay. 1.807 Viability of deposit.

1.704 Reduction of period of adjustment of 1.808 Furnishing of samples.
patent term. 1.809 Examination procedures.
APPLICATION DISCLOSURES CONTAINING OFFICE ACTIONS AND RESPONSES (BEFORE THE
NUCLEOTIDE AND/OR AMINO ACID SEQUENCES EXAMINER) IN Inter Partes REEXAMINATION
1.821 Nucleotide and/or amino acid sequence 1.935 Initial Office action usually accom-
disclosures in patent applications. panies order for inter partes reexamina-
1.822 Symbols and format to be used for nu- tion.
cleotide and/or amino acid sequence 1.937 Conduct of inter partes reexamination.
data. 1.939 Unauthorized papers in inter partes re-
1.823 Requirements for nucleotide and/or examination.
amino acid sequences as part of the ap- 1.941 Amendments by patent owner in inter
plication. partes reexamination.
1.824 Form and format for nucleotide and/or 1.943 Requirements of responses, written
amino acid sequence submissions in com- comments, and briefs in inter partes reex-
puter readable form. amination.
1.825 Amendments to or replacement of se- 1.945 Response to Office action by patent
quence listing and computer readable owner in inter partes reexamination.
copy thereof. 1.947 Comments by third party requester to
APPENDIX A TO SUBPART G OF PART 1—SAM- patent owner’s response in inter partes re-
PLE SEQUENCE LISTING examination.
1.948 Limitations on submission of prior art
Subpart H—Inter Partes Reexamination of by third party requester following the
Patents That Issued From an Original order for inter partes reexamination.
Application Filed in the United States 1.949 Examiner’s Office action closing pros-
on or After November 29, 1999 ecution in inter partes reexamination.
1.951 Options after Office action closing
PRIOR ART CITATIONS prosecution in inter partes reexamination.
1.902 Processing of prior art citations dur- 1.953 Examiner’s Right of Appeal Notice in
ing an inter partes reexamination pro- inter partes reexamination.
ceeding.
INTERVIEWS PROHIBITED IN Inter Partes
REQUIREMENTS FOR Inter Partes REEXAMINATION
REEXAMINATION PROCEEDINGS 1.955 Interviews prohibited in inter partes re-
1.903 Service of papers on parties in inter examination proceedings.
partes reexamination.
EXTENSIONS OF TIME, TERMINATING OF REEX-
1.904 Notice of inter partes reexamination in
AMINATION PROSECUTION, AND PETITIONS TO
Official Gazette.
REVIVE IN Inter Partes REEXAMINATION
1.905 Submission of papers by the public in
inter partes reexamination. 1.956 Patent owner extensions of time in
1.906 Scope of reexamination in inter partes inter partes reexamination.
reexamination proceeding. 1.957 Failure to file a timely, appropriate or
1.907 Inter partes reexamination prohibited. complete response or comment in inter
1.913 Persons eligible to file, and time for partes reexamination.
filing, a request for inter partes reexam- 1.958 Petition to revive inter partes reexam-
ination. ination prosecution terminated for lack
1.915 Content of request for inter partes reex- of patent owner response.
amination.
1.919 Filing date of request for inter partes APPEAL TO THE PATENT TRIAL AND APPEAL
reexamination. BOARD IN Inter Partes REEXAMINATION
1.923 Examiner’s determination on the re- 1.959 Appeal in inter partes reexamination.
quest for inter partes reexamination. 1.961–1.977 [Reserved]
1.925 Partial refund if request for inter 1.979 Return of Jurisdiction from the Pat-
partes reexamination is not ordered. ent Trial and Appeal Board; termination
1.927 Petition to review refusal to order of appeal proceedings.
inter partes reexamination. 1.981 Reopening after a final decision of the
Patent Trial and Appeal Board.
Inter Partes REEXAMINATION OF PATENTS
1.931 Order for inter partes reexamination. APPEAL TO THE UNITED STATES COURT OF AP-
PEALS FOR THE FEDERAL CIRCUIT IN Inter
INFORMATION DISCLOSURE IN Inter Partes Partes REEXAMINATION
REEXAMINATION
1.983 Appeal to the United States Court of

1.933 Patent owner duty of disclosure in Appeals for the Federal Circuit in inter
inter partes reexamination proceedings. partes reexamination.
10
U.S. Patent and Trademark Office, Commerce § 1.1
CONCURRENT PROCEEDINGS INVOLVING SAME TRANSMITTAL OF THE INTERNATIONAL DESIGN
PATENT IN Inter Partes REEXAMINATION APPLICATION TO THE INTERNATIONAL BUREAU
1.985 Notification of prior or concurrent 1.1045 Procedures for transmittal of inter-
proceedings in inter partes reexamina- national design application to the Inter-
tion. national Bureau.
1.987 Suspension of inter partes reexamina-
tion proceeding due to litigation. RELIEF FROM PRESCRIBED TIME LIMITS; CON-
1.989 Merger of concurrent reexamination VERSION TO A DESIGN APPLICATION UNDER 35
proceedings. U.S.C. CHAPTER 16
1.991 Merger of concurrent reissue applica-
tion and inter partes reexamination pro- 1.1051 Relief from prescribed time limits.
ceeding. 1.1052 Conversion to a design application
1.993 Suspension of concurrent interference under 35 U.S.C. chapter 16.
and inter partes reexamination pro-
NATIONAL PROCESSING OF INTERNATIONAL
ceeding.
DESIGN APPLICATIONS
1.995 Third party requester’s participation
rights preserved in merged proceeding. 1.1061 Rules applicable.
1.1062 Examination.
REEXAMINATION CERTIFICATE IN Inter Partes
1.1063 Notification of Refusal.
REEXAMINATION
1.1064 One independent and distinct design.
1.997 Issuance and publication of inter partes 1.1065 Corrections and other changes in the
reexamination certificate concludes inter International Register.
partes reexamination proceeding. 1.1066 Correspondence address for a non-
provisional international design applica-
Subpart I—International Design Application tion.
GENERAL INFORMATION 1.1067 Title, description, and the inventor’s
oath or declaration.
1.1001 Definitions related to international 1.1068 Statement of grant of protection.
design applications. 1.1070 Notification of Invalidation.
1.1002 The United States Patent and Trade- 1.1071 Grant of protection for an industrial
mark Office as an office of indirect filing. design only upon issuance of a patent.
1.1003 The United States Patent and Trade-
mark Office as a designated office. AUTHORITY: 35 U.S.C. 2(b)(2), unless other-
1.1004 The International Bureau. wise noted.
1.1005 Display of currently valid control
SOURCE: 24 FR 10332, Dec. 22, 1959, unless
number under the Paperwork Reduction
otherwise noted.
Act.
EDITORIAL NOTES: 1. In Patent and Trade-
WHO MAY FILE AN INTERNATIONAL DESIGN mark Office publications and usage the part
APPLICATION number is omitted from the numbers of §§ 1.1
1.1011 Applicant for international design ap- to 1.352 and the numbers to the right of the
plication. decimal point correspond with the respective
1.1012 Applicant’s Contracting Party. rule numbers.
2. For nomenclature changes to part 1, see
THE INTERNATIONAL DESIGN APPLICATION
68 FR 14335, Mar. 25, 2003.
1.1021 Contents of the international design
application.
1.1022 Form and signature.
Subpart A—General Provisions
1.1023 Filing date of an international design
application in the United States. GENERAL INFORMATION AND
1.1024 The description. CORRESPONDENCE
1.1025 The claim.
1.1026 Reproductions. § 1.1 Addresses for non-trademark cor-
1.1027 Specimens. respondence with the United States
1.1028 Deferment of publication. Patent and Trademark Office.
FEES (a) In general. Except as provided in
paragraphs (a)(3)(i), (a)(3)(ii), and (d)(1)
1.1031 International design application fees.
of this section, all correspondence in-
REPRESENTATION tended for the United States Patent
and Trademark Office must be ad-
1.1041 Representation in an international
design application. dressed to either ‘‘Director of the
United States Patent and Trademark
1.1042 Correspondence respecting inter-

national design applications filed with Office, P.O. Box 1450, Alexandria, Vir-
the Office as an office of indirect filing. ginia 22313–1450’’ or to specific areas
11
§ 1.1 37 CFR Ch. I (7–1–16 Edition)
within the Office as set out in para- not be filed elsewhere in the United
graphs (a)(1), and (a)(3)(iii) of this sec- States Patent and Trademark Office,
tion. When appropriate, correspondence and may be returned.
should also be marked for the atten- (4) Office of Public Records correspond-
tion of a particular office or individual. ence. (i) Assignments. All patent-re-
(1) Patent correspondence—(i) In gen- lated documents submitted by mail to
eral. All correspondence concerning be recorded by Assignment Services Di-
patent matters processed by organiza- vision, except for documents filed to-
tions reporting to the Commissioner gether with a new application, should
for Patents should be addressed to: be addressed to: Mail Stop Assignment
Commissioner for Patents, PO Box Recordation Services, Director of the
1450, Alexandria, Virginia 22313–1450. United States Patent and Trademark
(ii) Patent Trial and Appeal Board. See Office, P.O. Box 1450, Alexandria, Vir-
§ 41.10 or § 42.6 of this title. Notices of ginia 22313–1450. See § 3.27.
appeal, appeal briefs, reply briefs, re- (5) Office of Enrollment and Discipline
quests for oral hearing, as well as all correspondence. All correspondence di-
other correspondence in an application rected to the Office of Enrollment and
or a patent involved in an appeal to the Discipline concerning enrollment, reg-
Board for which an address is not oth- istration, and investigation matters
erwise specified, should be addressed as should be addressed to Mail Stop OED,
set out in paragraph (a)(1)(i) of this Director of the United States Patent
section. and Trademark Office, P.O. Box 1450,
(2) [Reserved] Alexandria, Virginia 22313–1450.
(3) Office of General Counsel cor-
(ii) Documents. All requests for cer-
respondence—(i) Litigation and service.
tified or uncertified copies of patent
Correspondence relating to pending
documents should be addressed to: Mail
litigation or otherwise within the
Stop Document Services, Director of
scope of part 104 of this title shall be
the United States Patent and Trade-
addressed as provided in § 104.2.
mark Office, P.O. Box 1450, Alexandria,
(ii) Disciplinary proceedings. Cor-
Virginia 22313–1450.
respondence to counsel for the Director
of the Office of Enrollment and Dis- (b) Patent Cooperation Treaty. Letters
cipline relating to disciplinary pro- and other communications relating to
ceedings pending before a Hearing Offi- international applications during the
cer or the Director shall be mailed to: international stage and prior to the as-
Mail Stop 8, Office of the Solicitor, signment of a national serial number
United States Patent and Trademark should be additionally marked ‘‘Mail
Office, P.O. Box 1450, Alexandria, Vir- Stop PCT.’’
ginia 22313–1450. (c) For reexamination or supplemental
(iii) Solicitor, in general. Correspond- examination proceedings. (1) All cor-
ence to the Office of the Solicitor not respondence concerning ex parte reex-
otherwise provided for shall be ad- amination, other than correspondence
dressed to: Mail Stop 8, Office of the to the Office of the General Counsel
Solicitor, United States Patent and pursuant to § 1.1(a)(3) and § 102.4 of this
Trademark Office, P.O. Box 1450, Alex- chapter, should be additionally marked
andria, Virginia 22313–1450. ‘‘Mail Stop Ex Parte Reexam.’’
(iv) General Counsel. Correspondence (2) All correspondence concerning
to the Office of the General Counsel inter partes reexamination, other than
not otherwise provided for, including correspondence to the Office of the
correspondence to the General Counsel General Counsel pursuant to § 1.1(a)(3)
relating to disciplinary proceedings, and § 102.4 of this chapter, should be ad-
shall be addressed to: General Counsel, ditionally marked ‘‘Mail Stop Inter
United States Patent and Trademark Partes Reexam.’’
Office, PO Box 1450, Alexandria, Vir- (3) Requests for supplemental exam-
ginia 22313–1450. ination (original and corrected request
(v) Improper correspondence. Cor- papers) and any other paper filed in a
respondence improperly addressed to a supplemental examination proceeding,
Post Office Box specified in paragraphs should be additionally marked ‘‘Mail

(a)(3)(i) and(a)(3)(ii) of this section will Stop Supplemental Examination.’’
12
(4) All correspondence concerning a lation of this requirement will be sub-

reexamination proceeding ordered as a mitted to the Director and will not be
result of a supplemental reexamination entered. A notice of the non-entry of
proceeding, other than correspondence the paper will be provided. Complaints
to the Office of the General Counsel against examiners and other employees
pursuant to § 1.1(a)(3) and § 102.4 of this must be made in correspondence sepa-
chapter should be additionally marked rate from other papers.
‘‘Mail Stop Ex Parte Reexam.’’
(d) Payments of maintenance fees in [68 FR 38624, June 30, 2003]
patents not submitted electronically
over the Internet, and correspondence § 1.4 Nature of correspondence and
related to maintenance fees may be ad- signature requirements.
dressed to: Director of the United (a) Correspondence with the Patent
States Patent and Trademark Office, and Trademark Office comprises:
Attn: Maintenance Fee, 2051 Jamieson (1) Correspondence relating to serv-
Avenue, Suite 300, Alexandria, Virginia ices and facilities of the Office, such as
22314. general inquiries, requests for publica-
(e) Patent term extension. All applica-
tions supplied by the Office, orders for
tions for extension of patent term
under 35 U.S.C. 156 and any commu- printed copies of patents, orders for
nications relating thereto intended for copies of records, transmission of as-
the United States Patent and Trade- signments for recording, and the like,
mark Office should be additionally and
marked ‘‘Mail Stop Hatch-Waxman (2) Correspondence in and relating to a
PTE.’’ When appropriate, the commu- particular application or other proceeding
nication should also be marked to the in the Office. See particularly the rules
attention of a particular individual, as relating to the filing, processing, or
where a decision has been rendered. other proceedings of national applica-
(f) [Reserved] tions in subpart B of this part; of inter-
[68 FR 14335, Mar. 25, 2003; 68 FR 19371, Apr. national applications in subpart C of
21, 2003, as amended at 68 FR 48287, Aug. 13, this part; of ex parte reexaminations of
2003; 68 FR 71006, Dec. 22, 2003; 69 FR 29877, patents in subpart D of this part; of
May 26, 2004; 69 FR 35451, June 24, 2004; 69 FR supplemental examination of patents
49997, Aug. 12, 2004; 72 FR 18904, Apr. 16, 2007;
in subpart E of this part; of extension
73 FR 47540, Aug. 14, 2008; 75 FR 36295, June
25, 2010; 77 FR 46624, Aug. 6, 2012; 77 FR 48811, of patent term in subpart F of this
Aug. 14, 2012; 78 FR 62393, Oct. 21, 2013] part; of inter partes reexaminations of
patents in subpart H of this part; of
§ 1.2 Business to be transacted in writ- international design applications in
ing. subpart I of this part; and of the Patent
All business with the Patent and Trial and Appeal Board in parts 41 and
Trademark Office should be transacted 42 of this chapter.
in writing. The personal attendance of (b) Since each file must be complete
applicants or their attorneys or agents in itself, a separate copy of every paper
at the Patent and Trademark Office is to be filed in a patent application, pat-
unnecessary. The action of the Patent ent file, or other proceeding must be
and Trademark Office will be based ex-
furnished for each file to which the
clusively on the written record in the
paper pertains, even though the con-
Office. No attention will be paid to any
alleged oral promise, stipulation, or tents of the papers filed in two or more
understanding in relation to which files may be identical. The filing of du-
there is disagreement or doubt. plicate copies of correspondence in the
file of an application, patent, or other
§ 1.3 Business to be conducted with de- proceeding should be avoided, except in
corum and courtesy. situations in which the Office requires
Applicants and their attorneys or the filing of duplicate copies. The Of-
agents are required to conduct their fice may dispose of duplicate copies of
business with the United States Patent correspondence in the file of an appli-
and Trademark Office with decorum cation, patent, or other proceeding.

and courtesy. Papers presented in vio-
13
§ 1.4 37 CFR Ch. I (7–1–16 Edition)
(c) Since different matters may be the correspondence must insert his or
considered by different branches or sec- her own S-signature with a first single
tions of the Office, each distinct sub- forward slash mark before, and a sec-
ject, inquiry, or order must be con- ond single forward slash mark after,
tained in a separate paper to avoid con- the S-signature (e.g.,/Dr. James T.
fusion and delay in answering papers Jones, Jr./); and
dealing with different subjects. Sub- (ii) A patent practitioner (§ 1.32(a)(1)),
jects provided for on a single Office or signing pursuant to §§ 1.33(b)(1) or
World Intellectual Property Organiza- 1.33(b)(2), must supply his/her registra-
tion form may be contained in a single tion number either as part of the S-sig-
paper. nature, or immediately below or adja-
(d)(1) Handwritten signature. Each cent to the S-signature. The number
piece of correspondence, except as pro- (#) character may be used only as part
vided in paragraphs (d)(2), (d)(3), (d)(4), of the S-signature when appearing be-
(e), and (f) of this section, filed in an fore a practitioner’s registration num-
application, patent file, or other pro- ber; otherwise the number character
ceeding in the Office which requires a may not be used in an S-signature.
person’s signature, must: (iii) The signer’s name must be:
(i) Be an original, that is, have an (A) Presented in printed or typed
original handwritten signature person- form preferably immediately below or
ally signed, in permanent dark ink or adjacent the S-signature, and
its equivalent, by that person; or (B) Reasonably specific enough so
(ii) Be a direct or indirect copy, such that the identity of the signer can be
as a photocopy or facsimile trans- readily recognized.
mission (§ 1.6(d)), of an original. In the (3) Electronically submitted correspond-
event that a copy of the original is ence. Correspondence permitted via the
filed, the original should be retained as Office electronic filing system may be
evidence of authenticity. If a question signed by a graphic representation of a
of authenticity arises, the Office may handwritten signature as provided for
require submission of the original. in paragraph (d)(1) of this section or a
(2) S-signature. An S-signature is a graphic representation of an S-signa-
signature inserted between forward ture as provided for in paragraph (d)(2)
slash marks, but not a handwritten sig- of this section when it is submitted via
nature as defined by paragraph (d)(1) of the Office electronic filing system.
this section. An S-signature includes (4) Certifications—(i) Certification as to
any signature made by electronic or the paper presented. The presentation to
mechanical means, and any other mode the Office (whether by signing, filing,
of making or applying a signature submitting, or later advocating) of any
other than a handwritten signature as paper by a party, whether a practi-
provided for in paragraph (d)(1) of this tioner or non-practitioner, constitutes
section. Correspondence being filed in a certification under § 11.18(b) of this
the Office in paper, by facsimile trans- subchapter. Violations of § 11.18(b)(2) of
mission as provided in § 1.6(d), or via this subchapter by a party, whether a
the Office electronic filing system as practitioner or non-practitioner, may
an attachment as provided in § 1.6(a)(4), result in the imposition of sanctions
for a patent application, patent, or a under § 11.18(c) of this subchapter. Any
reexamination or supplemental exam- practitioner violating § 11.18(b) of this
ination proceeding may be S-signature subchapter may also be subject to dis-
signed instead of being personally ciplinary action. See § 11.18(d) of this
signed (i.e., with a handwritten signa- subchapter.
ture) as provided for in paragraph (d)(1) (ii) Certification as to the signature.
of this section. The requirements for The person inserting a signature under
an S-signature under this paragraph paragraph (d)(2) or (d)(3) of this section
(d)(2) of this section are as follows. in a document submitted to the Office
(i) The S-signature must consist only certifies that the inserted signature ap-
of letters, or Arabic numerals, or both, pearing in the document is his or her
with appropriate spaces and commas, own signature. A person submitting a
periods, apostrophes, or hyphens for document signed by another under

punctuation, and the person signing paragraph (d)(2) or (d)(3) of this section
14
is obligated to have a reasonable basis (g) An applicant who has not made of
to believe that the person whose signa- record a registered attorney or agent
ture is present on the document was may be required to state whether as-
actually inserted by that person, and sistance was received in the prepara-
should retain evidence of authenticity tion or prosecution of the patent appli-
of the signature. Violations of the cer- cation, for which any compensation or
tification as to the signature of an- consideration was given or charged,
other or a person’s own signature as set and if so, to disclose the name or
forth in this paragraph may result in names of the person or persons pro-
the imposition of sanctions under viding such assistance. Assistance in-
§ 11.18(c) and (d) of this chapter. cludes the preparation for the appli-
(5) Forms. The Office provides forms cant of the specification and amend-
for the public to use in certain situa- ments or other papers to be filed in the
tions to assist in the filing of cor- Patent and Trademark Office, as well
respondence for a certain purpose and as other assistance in such matters,
to meet certain requirements for pat- but does not include merely making
ent applications and proceedings. Use drawings by draftsmen or stenographic
of the forms for purposes for which services in typing papers.
they were not designed is prohibited. (h) Ratification/confirmation/evidence
No changes to certification statements of authenticity: The Office may require
on the Office forms (e.g., oath or dec- ratification, confirmation (which in-
laration forms, terminal disclaimer cludes submission of a duplicate docu-
forms, petition forms, and nonpublica- ment but with a proper signature), or
tion request forms) may be made. The evidence of authenticity of a signature,
existing text of a form, other than a such as when the Office has reasonable
certification statement, may be modi- doubt as to the authenticity (veracity)
fied, deleted, or added to, if all text of the signature, e.g., where there are
identifying the form as an Office form variations of a signature, or where the
is removed. The presentation to the Of- signature and the typed or printed
fice (whether by signing, filing, sub- name, do not clearly identify the per-
mitting, or later advocating) of any Of- son signing.
fice form with text identifying the (Pub. L. 94–131, 89 Stat. 685; 35 U.S.C. 6, Pub.
form as an Office form by a party, L. 97–247)
whether a practitioner or non-practi-
EDITORIAL NOTE: For FEDERAL REGISTER ci-
tioner, constitutes a certification
tations affecting § 1.4, see the List of CFR
under § 11.18(b) of this chapter that the Sections Affected, which appears in the
existing text and any certification Finding Aids section of the printed volume
statements on the form have not been and at www.fdsys.gov.
altered other than permitted by EFS-
Web customization. § 1.5 Identification of patent, patent
(e) The following correspondence application, or patent-related pro-
must be submitted with an original ceeding.
handwritten signature personally (a) No correspondence relating to an
signed in permanent dark ink or its application should be filed prior to re-
equivalent: ceipt of the assigned application num-
(1) Correspondence requiring a per- ber (i.e., U.S. application number,
son’s signature and relating to reg- international application number, or
istration to practice before the Patent international registration number as
and Trademark Office in patent cases, appropriate). When correspondence di-
enrollment and disciplinary investiga- rected to the Patent and Trademark
tions, or disciplinary proceedings; and Office concerns a previously filed appli-
(2) Payments by credit cards where cation for a patent, it must identify on
the payment is not being made via the the top page in a conspicuous location,
Office’s electronic filing systems. the application number (consisting of
(f) When a document that is required the series code and the serial number;
by statute to be certified must be filed, e.g., 07/123,456), or the serial number
a copy, including a photocopy or fac- and filing date assigned to that appli-
simile transmission, of the certification by the Patent and Trademark

cation is not acceptable. Office, or the international application
15
§ 1.6 37 CFR Ch. I (7–1–16 Edition)
number of the international applica- ceeding should identify it as such by

tion, or the international registration the number of the patent undergoing
number of an international design ap- reexamination or supplemental exam-
plication. Any correspondence not con- ination, the request control number as-
taining such identification will be resigned to such proceeding, and, if
turned to the sender where a return ad- known, the group art unit and name of
dress is available. The returned cor- the examiner to which it been assigned.
respondence will be accompanied with (e) [Reserved]
a cover letter, which will indicate to (f) When a paper concerns a provi-
the sender that if the returned cor- sional application, it should identify
respondence is resubmitted to the Pat- the application as such and include the
ent and Trademark Office within two application number.
weeks of the mail date on the cover let-
ter, the original date of receipt of the (Pub. L. 94–131, 89 Stat. 685; 35 U.S.C. 6, Pub.
correspondence will be considered by L. 97–247)
the Patent and Trademark Office as [24 FR 10332, Dec. 22, 1959, as amended at 46
the date of receipt of the correspond- FR 29181, May 29, 1981; 49 FR 552, Jan. 4, 1984;
ence. Applicants may use either the 49 FR 48451, Dec. 12, 1984; 53 FR 47807, Nov. 28,
Certificate of Mailing or Transmission 1988; 58 FR 54501, Oct. 22, 1993; 61 FR 42802,
procedure under § 1.8 or the Priority Aug. 19, 1996; 61 FR 56446, Nov. 1, 1996; 64 FR
Mail Express® procedure under § 1.10 for 48917, Sept. 8, 1999; 68 FR 48288, Aug. 13, 2003;
69 FR 49997, Aug. 12, 2004; 77 FR 46624, Aug. 6,
resubmissions of returned correspond- 2012; 77 FR 48812, Aug. 14, 2012; 78 FR 62394,
ence if they desire to have the benefit Oct. 21, 2013; 79 FR 63039, Oct. 22, 2014; 80 FR
of the date of deposit in the United 17952, Apr. 2, 2015]
States Postal Service. If the returned
correspondence is not resubmitted § 1.6 Receipt of correspondence.
within the two-week period, the date of
(a) Date of receipt and Priority Mail
receipt of the resubmission will be con-
Express® date of deposit. Correspondence
sidered to be the date of receipt of the
received in the Patent and Trademark
correspondence. The two-week period
Office is stamped with the date of re-
to resubmit the returned correspond-
ence will not be extended. In addition ceipt except as follows:
to the application number, all cor- (1) The Patent and Trademark Office
respondence directed to the Patent and is not open for the filing of correspond-
Trademark Office concerning applica- ence on any day that is a Saturday,
tions for patent should also state the Sunday, or Federal holiday within the
name of the first listed inventor, the District of Columbia. Except for cor-
title of the invention, the date of filing respondence transmitted by facsimile
the same, and if known, the group art under paragraph (a)(3) of this section,
unit or other unit within the Patent or filed electronically under paragraph
and Trademark Office responsible for (a)(4) of this section, no correspondence
considering the correspondence and the is received in the Office on Saturdays,
name of the examiner or other person Sundays, or Federal holidays within
to which it has been assigned. the District of Columbia.
(b) When the letter concerns a patent (2) Correspondence filed in accord-
other than for purposes of paying a ance with § 1.10 will be stamped with
maintenance fee, it should state the the date of deposit as Priority Mail Ex-
number and date of issue of the patent, press® with the United States Postal
the name of the patentee, and the title Service.
of the invention. For letters con- (3) Correspondence transmitted by
cerning payment of a maintenance fee facsimile to the Patent and Trademark
in a patent, see the provisions of Office will be stamped with the date on
§ 1.366(c). which the complete transmission is re-
(c) Correspondence relating to a trial ceived in the Patent and Trademark
proceeding before the Patent Trial and Office unless that date is a Saturday,
Appeal Board (part 42 of this title) are Sunday, or Federal holiday within the
governed by § 42.6 of this title. District of Columbia, in which case the
(d) A letter relating to a reexamina- date stamped will be the next suc-
tion or supplemental examination proceeding day which is not a Saturday,
16
Sunday, or Federal holiday within the continued prosecution application

District of Columbia. under § 1.53(d) may be transmitted to
(4) Correspondence may be submitted the Office by facsimile;
using the Office electronic filing sys- (4) Color drawings submitted under
tem only in accordance with the Office §§ 1.81, 1.83 through 1.85, 1.152, 1.165,
electronic filing system requirements. 1.173, 1.437, or 1.1026;
Correspondence submitted to the Office (5) A request for reexamination under
by way of the Office electronic filing § 1.510 or § 1.913, or a request for supple-
system will be accorded a receipt date, mental examination under § 1.610;
which is the date the correspondence is (6) Correspondence to be filed in an
received at the correspondence address application subject to a secrecy order
for the Office set forth in § 1.1 when it under §§ 5.1 through 5.5 of this chapter
was officially submitted. and directly related to the secrecy
(b) [Reserved] order content of the application;
(c) Correspondence delivered by hand. (7) In contested cases and trials be-
In addition to being mailed, cor- fore the Patent Trial and Appeal
respondence may be delivered by hand Board, except as the Board may ex-
during hours the Office is open to re- pressly authorize.
ceive correspondence. (e) [Reserved]
(d) Facsimile transmission. Except in (f) Facsimile transmission of a patent
the cases enumerated below, cor- application under § 1.53(d). In the event
respondence, including authorizations that the Office has no evidence of re-
to charge a deposit account, may be ceipt of an application under § 1.53(d) (a
transmitted by facsimile. The receipt continued prosecution application)
date accorded to the correspondence transmitted to the Office by facsimile
will be the date on which the complete transmission, the party who trans-
transmission is received in the United mitted the application under § 1.53(d)
States Patent and Trademark Office, may petition the Director to accord
unless that date is a Saturday, Sunday, the application under § 1.53(d) a filing
or Federal holiday within the District date as of the date the application
of Columbia. See paragraph (a)(3) of under § 1.53(d) is shown to have been
this section. To facilitate proper proc- transmitted to and received in the Of-
essing, each transmission session fice,
should be limited to correspondence to (1) Provided that the party who
be filed in a single application or other transmitted such application under
proceeding before the United States § 1.53(d):
Patent and Trademark Office. The ap- (i) Informs the Office of the previous
plication number of a patent applica- transmission of the application under
tion, the control number of a reexam- § 1.53(d) promptly after becoming aware
ination or supplemental examination that the Office has no evidence of re-
proceeding, the interference number of ceipt of the application under § 1.53(d);
an interference proceeding, the trial (ii) Supplies an additional copy of the
number of a trial proceeding before the previously transmitted application
Board, or the patent number of a pat- under § 1.53(d); and
ent should be entered as a part of the (iii) Includes a statement which at-
sender’s identification on a facsimile tests on a personal knowledge basis or
cover sheet. Facsimile transmissions to the satisfaction of the Director to
are not permitted and, if submitted, the previous transmission of the appli-
will not be accorded a date of receipt in cation under § 1.53(d) and is accom-
the following situations: panied by a copy of the sending unit’s
(1) Correspondence as specified in report confirming transmission of the
§ 1.4(e), requiring an original signature; application under § 1.53(d) or evidence
(2) Certified documents as specified that came into being after the com-
in § 1.4(f); plete transmission and within one busi-
(3) Correspondence that cannot re- ness day of the complete transmission
ceive the benefit of the certificate of of the application under § 1.53(d).
mailing or transmission as specified in (2) The Office may require additional
§ 1.8(a)(2)(i)(A) through (D), (F), (I), and evidence to determine if the applica-
(K) and § 1.8(a)(2)(iii)(A), except that a tion under § 1.53(d) was transmitted to
17
§ 1.7 37 CFR Ch. I (7–1–16 Edition)
and received in the Office on the date or paying any fee in the United States
in question. Patent and Trademark Office falls on
(g) Submission of the national stage cor- Saturday, Sunday, or on a Federal hol-
respondence required by § 1.495 via the Of- iday within the District of Columbia,
fice electronic filing system. In the event the action may be taken, or the fee
that the Office has no evidence of re- paid, on the next succeeding business
ceipt of the national stage correspond- day which is not a Saturday, Sunday,
ence required by § 1.495, which was sub- or a Federal holiday. See § 90.3 of this
mitted to the Office by the Office elec- chapter for time for appeal or for com-
tronic filing system, the party who mencing civil action.
submitted the correspondence may pe- (b) If the day that is twelve months
tition the Director to accord the na- after the filing date of a provisional ap-
tional stage correspondence a receipt plication under 35 U.S.C. 111(b) and
date as of the date the correspondence § 1.53(c) falls on Saturday, Sunday, or
is shown to have been officially sub- on a Federal holiday within the Dis-
mitted to the Office. trict of Columbia, the period of pend-
(1) The petition of this paragraph (g) ency shall be extended to the next suc-
requires that the party who submitted ceeding secular or business day which
such national stage correspondence: is not a Saturday, Sunday, or a Federal
(i) Informs the Office of the previous holiday.
submission of the correspondence
[65 FR 14871, Mar. 20, 2000, as amended at 78
promptly after becoming aware that FR 62395, Oct. 21, 2013]
the Office has no evidence of receipt of
the correspondence under § 1.495; § 1.8 Certificate of mailing or trans-
(ii) Supplies an additional copy of the mission.
previously submitted correspondence; (a) Except in the situations enumer-
(iii) Includes a statement that at- ated in paragraph (a)(2) of this section
tests on a personal knowledge basis, or or as otherwise expressly excluded in
to the satisfaction of the Director, that this chapter, correspondence required
the correspondence was previously offi- to be filed in the U.S. Patent and
cially submitted; and Trademark Office within a set period of
(iv) Supplies a copy of an acknowl- time will be considered as being timely
edgment receipt generated by the Of- filed if the procedure described in this
fice electronic filing system, or equiva- section is followed. The actual date of
lent evidence, confirming the submis- receipt will be used for all other pur-
sion to support the statement of para- poses.
graph (g)(1)(iii) of this section. (1) Correspondence will be considered
(2) The Office may require additional as being timely filed if:
evidence to determine if the national (i) The correspondence is mailed or
stage correspondence was submitted to transmitted prior to expiration of the
the Office on the date in question. set period of time by being:
[58 FR 54501, Oct. 22, 1993; 58 FR 64154, Dec. 6, (A) Addressed as set out in § 1.1(a)
1993; 61 FR 56447, Nov. 1, 1996; 62 FR 53180, and deposited with the U.S. Postal
Oct. 10, 1997; 64 FR 48917, Sept. 8, 1999; 65 FR Service with sufficient postage as first
54657, Sept. 8, 2000; 65 FR 76772, Dec. 7, 2000; class mail;
68 FR 14336, Mar. 25, 2003; 68 FR 48288, Aug. (B) Transmitted by facsimile to the
13, 2003; 69 FR 49997, Aug. 12, 2004; 69 FR 56536,
Patent and Trademark Office in ac-
Sept. 21, 2004; 72 FR 2775, Jan. 23, 2007; 77 FR
42173, July 17, 2012; 77 FR 46624, Aug. 6, 2012; cordance with § 1.6(d); or
78 FR 62394, Oct. 21, 2013; 79 FR 63039, Oct. 22, (C) Transmitted via the Office elec-
2014; 80 FR 17952, Apr. 2, 2015] tronic filing system in accordance with
§ 1.6(a)(4); and
§ 1.7 Times for taking action; Expira- (ii) The correspondence includes a
tion on Saturday, Sunday or Fed- certificate for each piece of correspond-
eral holiday. ence stating the date of deposit or
(a) Whenever periods of time are transmission. The person signing the
specified in this part in days, calendar certificate should have reasonable
days are intended. When the day, or basis to expect that the correspondence
the last day fixed by statute or by or would be mailed or transmitted on or

under this part for taking any action before the date indicated.
18
(2) The procedure described in para- correspondence, or after the applica-

graph (a)(1) of this section does not tion is held to be abandoned, or after
apply to, and no benefit will be given the proceeding is dismissed or decided
to a Certificate of Mailing or Trans- with prejudice, or the prosecution of a
mission on the following: reexamination proceeding is termi-
(i) Relative to Patents and Patent Ap- nated pursuant to § 1.550(d) or § 1.957(b)
plications— or limited pursuant to § 1.957(c), or a re-
(A) The filing of a national patent ap- quester paper is refused consideration
plication specification and drawing or pursuant to § 1.957(a), the correspond-
other correspondence for the purpose of ence will be considered timely if the
obtaining an application filing date, in- party who forwarded such correspond-
cluding a request for a continued pros- ence:
ecution application under § 1.53(d);
(1) Informs the Office of the previous
(B) Papers filed in trials before the
mailing or transmission of the cor-
Patent Trial and Appeal Board, which
respondence promptly after becoming
are governed by § 42.6(b) of this title;
aware that the Office has no evidence
(C) Papers filed in contested cases be-
fore the Patent Trial and Appeal of receipt of the correspondence;
Board, which are governed by § 41.106 (f) (2) Supplies an additional copy of the
of this title; previously mailed or transmitted cor-
(D) The filing of an international ap- respondence and certificate; and
plication for patent; (3) Includes a statement that attests
(E) The filing of correspondence in an on a personal knowledge basis or to the
international application before the satisfaction of the Director to the pre-
U.S. Receiving Office, the U.S. Inter- vious timely mailing, transmission or
national Searching Authority, or the submission. If the correspondence was
U.S. International Preliminary Exam- sent by facsimile transmission, a copy
ining Authority; of the sending unit’s report confirming
(F) The filing of a copy of the inter- transmission may be used to support
national application and the basic na- this statement. If the correspondence
tional fee necessary to enter the na- was transmitted via the Office elec-
tional stage, as specified in § 1.495(b). tronic filing system, a copy of an ac-
(G) The filing of a written declara- knowledgment receipt generated by
tion of abandonment under § 1.138; the Office electronic filing system con-
(H) The filing of a submission under firming submission may be used to sup-
§ 1.217 for publication of a redacted port this statement.
copy of an application; (c) The Office may require additional
(I) The filing of a third-party submis- evidence to determine if the cor-
sion under § 1.290;
respondence was timely filed.
(J) The calculation of any period of
adjustment, as specified in § 1.703(f); [58 FR 54502, Oct. 22, 1993; 58 FR 64154, Dec. 6,
and 1993, as amended at 61 FR 56447, Nov. 1, 1996;
(K) The filing of an international de- 62 FR 53181, Oct. 10, 1997; 67 FR 523, Jan. 4,
sign application. 2002; 68 FR 48288, Aug. 13, 2003; 69 FR 49997,
(ii) [Reserved] Aug. 12, 2004; 69 FR 56536, Sept. 21, 2004; 72 FR
2775, Jan. 23, 2007; 72 FR 18904, Apr. 16, 2007;
(iii) Relative to Disciplinary Pro-
73 FR 47684, Aug. 14, 2008; 77 FR 42173, July
ceedings— 17, 2012; 80 FR 17953, Apr. 2, 2015]
(A) Correspondence filed in connec-
tion with a disciplinary proceeding § 1.9 Definitions.
under part 11 of this chapter.
(B) [Reserved] (a)(1) A national application as used
(b) In the event that correspondence in this chapter means either a U.S. ap-
is considered timely filed by being plication for patent which was filed in
mailed or transmitted in accordance the Office under 35 U.S.C. 111, an inter-
with paragraph (a) of this section, but national application filed under the
not received in the U.S. Patent and Patent Cooperation Treaty in which
Trademark Office after a reasonable the basic national fee under 35 U.S.C.
amount of time has elapsed from the 41(a)(1)(F) has been paid, or an inter-
time of mailing or transmitting of the national design application filed under
19
§ 1.9 37 CFR Ch. I (7–1–16 Edition)
the Hague Agreement in which the Of- (h) A Federal holiday within the Dis-
fice has received a copy of the inter- trict of Columbia as used in this chapter
national registration pursuant to means any day, except Saturdays and
Hague Agreement Article 10. Sundays, when the Patent and Trade-
(2) A provisional application as used mark Office is officially closed for busi-
in this chapter means a U.S. national ness for the entire day.
application for patent filed in the Of- (i) National security classified as
fice under 35 U.S.C. 111(b). used in this chapter means specifically
(3) A nonprovisional application as authorized under criteria established
used in this chapter means either a by an Act of Congress or Executive
U.S. national application for patent Order to be kept secret in the interest
which was filed in the Office under 35 of national defense or foreign policy
U.S.C. 111(a), an international applica- and, in fact, properly classified pursu-
tion filed under the Patent Cooperation ant to such Act of Congress or Execu-
Treaty in which the basic national fee tive Order.
under 35 U.S.C. 41(a)(1)(F) has been (j) Director as used in this chapter,
paid, or an international design appli-
except for part 11 of this chapter,
cation filed under the Hague Agree-
means the Under Secretary of Com-
ment in which the Office has received a
merce for Intellectual Property and Di-
copy of the international registration
pursuant to Hague Agreement Article rector of the United States Patent and
10. Trademark Office.
(b) An international application as (k) Paper as used in this chapter
used in this chapter means an inter- means a document that may exist in
national application for patent filed electronic form, or in physical form,
under the Patent Cooperation Treaty and therefore does not necessarily
prior to entering national processing at imply physical sheets of paper.
the Designated Office stage. (l) Hague Agreement as used in this
(c) A published application as used in chapter means the Geneva Act of the
this chapter means an application for Hague Agreement Concerning the
patent which has been published under International Registration of Indus-
35 U.S.C. 122(b). trial Designs adopted at Geneva, Swit-
(d)(1) The term inventor or zerland, on July 2, 1999, and Hague
inventorship as used in this chapter Agreement Article as used in this chap-
means the individual or, if a joint inter means an Article under the Hague
vention, the individuals collectively Agreement.
who invented or discovered the subject (m) Hague Agreement Regulations as
matter of the invention. used in this chapter means the Com-
(2) The term joint inventor or co- mon Regulations Under the 1999 Act
inventor as used in this chapter means and the 1960 Act of the Hague Agree-
any one of the individuals who in- ment, and Hague Agreement Rule as
vented or discovered the subject mat- used in this chapter means one of the
ter of a joint invention. Hague Agreement Regulations.
(e) The term joint research agree- (n) An international design applica-
ment as used in this chapter means a tion as used in this chapter means an
written contract, grant, or cooperative application for international registra-
agreement entered into by two or more tion of a design filed under the Hague
persons or entities for the performance
Agreement. Unless otherwise clear
of experimental, developmental, or re-
from the wording, reference to ‘‘design
search work in the field of the claimed
invention. application’’ or ‘‘application for a de-
sign patent’’ in this chapter includes
(f) The term claimed invention as
used in this chapter means the subject
matter defined by a claim in a patent
or an application for a patent.
(g) For definitions in Patent Trial
and Appeal Board proceedings, see

parts 41 and 42 of this title.
20
an international design application the correspondence and the date of de-

that designates the United States. posit as shown by the ‘‘date accepted’’
(Pub. L. 94–131, 89 Stat. 685; 35 U.S.C. 6, Pub.
on the Priority Mail Express® mailing
L. 97–247; 15 U.S.C. 1113, 1123) label or other official USPS notation,
may petition the Director to accord
[43 FR 20461, May 11, 1978, as amended at 47
the correspondence a filing date as of
FR 40139, Sept. 10, 1982; 47 FR 43275, Sept. 30,
1982; 49 FR 48451, Dec. 12, 1984; 60 FR 20220, the ‘‘date accepted’’ on the Priority
Apr. 25, 1995; 61 FR 56447, Nov. 1, 1996; 62 FR Mail Express® mailing label or other
53181, Oct. 10, 1997; 65 FR 54657, Sept. 8, 2000; official USPS notation, provided that:
65 FR 57051, Sept. 20, 2000; 68 FR 14336, Mar. (1) The petition is filed promptly
25, 2003; 68 FR 38624, June 30, 2003; 69 FR after the person becomes aware that
49997, Aug. 12, 2004; 73 FR 47685, Aug. 14, 2008; the Office has accorded, or will accord,
77 FR 46624, Aug. 6, 2012; 77 FR 48812, Aug. 14, a filing date other than the USPS de-
2012; 78 FR 11052, Feb. 14, 2013; 80 FR 17953,
Apr. 2, 2015] posit date;
(2) The number of the Priority Mail
§ 1.10 Filing of correspondence by Pri- Express® mailing label was placed on
ority Mail Express®. the paper(s) or fee(s) that constitute
(a)(1) Any correspondence received by the correspondence prior to the origi-
the U.S. Patent and Trademark Office nal mailing by Priority Mail Express®;
(USPTO) that was delivered by the Pri- and
ority Mail Express® Post Office to Ad- (3) The petition includes a true copy
dressee service of the United States of the Priority Mail Express® mailing
Postal Service (USPS) will be consid- label showing the ‘‘date accepted,’’ and
ered filed with the USPTO on the date of any other official notation by the
of deposit with the USPS. USPS relied upon to show the date of
(2) The date of deposit with USPS is deposit.
shown by the ‘‘date accepted’’ on the (d) Any person filing correspondence
Priority Mail Express® label or other under this section that was received by
official USPS notation. If the USPS de- the Office and delivered by the Priority
posit date cannot be determined, the Mail Express® Post Office to Addressee
correspondence will be accorded the service of the USPS, who can show
USPTO receipt date as the filing date. that the ‘‘date accepted’’ on the Pri-
See § 1.6(a). ority Mail Express® mailing label or
(b) Correspondence should be depos- other official notation entered by the
ited directly with an employee of the USPS was incorrectly entered or omit-
USPS to ensure that the person depos- ted by the USPS, may petition the Di-
iting the correspondence receives a leg- rector to accord the correspondence a
ible copy of the Priority Mail Express® filing date as of the date the cor-
mailing label with the ‘‘date accepted’’ respondence is shown to have been de-
clearly marked. Persons dealing indi- posited with the USPS, provided that:
rectly with the employees of the USPS (1) The petition is filed promptly
(such as by deposit in a Priority Mail after the person becomes aware that
Express® drop box) do so at the risk of the Office has accorded, or will accord,
not receiving a copy of the Priority a filing date based upon an incorrect
Mail Express® mailing label with the entry by the USPS;
desired ‘‘date accepted’’ clearly (2) The number of the Priority Mail
marked. The paper(s) or fee(s) that Express® mailing label was placed on
constitute the correspondence should the paper(s) or fee(s) that constitute
also include the Priority Mail Express® the correspondence prior to the origi-
mailing label number thereon. See nal mailing by Priority Mail Express®;
paragraphs (c), (d) and (e) of this sec- and
tion. (3) The petition includes a showing
(c) Any person filing correspondence which establishes, to the satisfaction
under this section that was received by of the Director, that the requested fil-
the Office and delivered by the Priority ing date was the date the correspond-
Mail Express® Post Office to Addressee ence was deposited in the Priority Mail
service of the USPS, who can show Express® Post Office to Addressee serv-
that there is a discrepancy between the ice prior to the last scheduled pickup
filing date accorded by the Office to for that day. Any showing pursuant to
21
§ 1.10 37 CFR Ch. I (7–1–16 Edition)
this paragraph must be corroborated and official notation entered by the

by evidence from the USPS or that USPS.
came into being after deposit and with- (f) The Office may require additional
in one business day of the deposit of evidence to determine if the cor-
the correspondence in the Priority respondence was deposited as Priority
Mail Express® Post Office to Addressee Mail Express® with the USPS on the
service of the USPS. date in question.
(e) Any person mailing correspond- (g) Any person who mails correspond-
ence addressed as set out in § 1.1(a) to ence addressed as set out in § 1.1(a) to
the Office with sufficient postage uti- the Office with sufficient postage uti-
lizing the Priority Mail Express® Post lizing the Priority Mail Express® Post
Office to Addressee service of the USPS Office to Addressee service of the
but not received by the Office, may pe- USPS, but has the correspondence re-
tition the Director to consider such turned by the USPS due to an interrup-
correspondence filed in the Office on tion or emergency in Priority Mail Ex-
the USPS deposit date, provided that: press® service, may petition the Direc-
(1) The petition is filed promptly tor to consider such correspondence as
after the person becomes aware that filed on a particular date in the Office,
the Office has no evidence of receipt of provided that:
the correspondence; (1) The petition is filed promptly
(2) The number of the Priority Mail after the person becomes aware of the
Express® mailing label was placed on return of the correspondence;
the paper(s) or fee(s) that constitute (2) The number of the Priority Mail
the correspondence prior to the origi- Express® mailing label was placed on
nal mailing by Priority Mail Express®; the paper(s) or fee(s) that constitute
(3) The petition includes a copy of the correspondence prior to the origi-
the originally deposited paper(s) or nal mailing by Priority Mail Express®;
fee(s) that constitute the correspond- (3) The petition includes the original
ence showing the number of the Pri- correspondence or a copy of the origi-
ority Mail Express® mailing label nal correspondence showing the num-
thereon, a copy of any returned post- ber of the Priority Mail Express® mail-
card receipt, a copy of the Priority ing label thereon and a copy of the Pri-
Mail Express® mailing label showing ority Mail Express® mailing label
the ‘‘date accepted,’’ a copy of any showing the ‘‘date accepted’’; and
other official notation by the USPS re- (4) The petition includes a statement
lied upon to show the date of deposit, which establishes, to the satisfaction
and, if the requested filing date is a of the Director, the original deposit of
date other than the ‘‘date accepted’’ on the correspondence and that the cor-
the Priority Mail Express® mailing respondence or copy of the correspond-
label or other official notation entered ence is the original correspondence or a
by the USPS, a showing pursuant to true copy of the correspondence origi-
paragraph (d)(3) of this section that the nally deposited with the USPS on the
requested filing date was the date the requested filing date. The Office may
correspondence was deposited in the require additional evidence to deter-
Priority Mail Express® Post Office to mine if the correspondence was re-
Addressee service prior to the last turned by the USPS due to an interrup-
scheduled pickup for that day; and tion or emergency in Priority Mail Ex-
(4) The petition includes a statement press® service.
which establishes, to the satisfaction (h) Any person who attempts to mail
of the Director, the original deposit of correspondence addressed as set out in
the correspondence and that the copies § 1.1(a) to the Office with sufficient
of the correspondence, the copy of the postage utilizing the Priority Mail Ex-
Priority Mail Express® mailing label, press® Post Office to Addressee service
the copy of any returned postcard re- of the USPS, but has the correspond-
ceipt, and any official notation entered ence refused by an employee of the
by the USPS are true copies of the USPS due to an interruption or emer-
originally mailed correspondence, gency in Priority Mail Express® serv-
original Priority Mail Express® mail- ice, may petition the Director to con-
ing label, returned postcard receipt, sider such correspondence as filed on a
22
particular date in the Office, provided ence is the original correspondence or a

that: true copy of the correspondence origi-
(1) The petition is filed promptly nally attempted to be deposited with
after the person becomes aware of the the USPS on the requested filing date.
refusal of the correspondence; [79 FR 63039, Oct. 22, 2014]
(2) The number of the Priority Mail
Express® mailing label was placed on RECORDS AND FILES OF THE PATENT AND
the paper(s) or fee(s) that constitute TRADEMARK OFFICE
the correspondence prior to the at-
tempted mailing by Priority Mail Ex- § 1.11 Files open to the public.
press®; (a) The specification, drawings, and
(3) The petition includes the original all papers relating to the file of: A pub-
correspondence or a copy of the origi- lished application; a patent; or a statu-
nal correspondence showing the num- tory invention registration are open to
ber of the Priority Mail Express® mail- inspection by the public, and copies
ing label thereon; and may be obtained upon the payment of
(4) The petition includes a statement the fee set forth in § 1.19(b)(2). If an ap-
by the person who originally attempted plication was published in redacted
to deposit the correspondence with the form pursuant to § 1.217, the complete
USPS which establishes, to the satis- file wrapper and contents of the patent
faction of the Director, the original at- application will not be available if: The
tempt to deposit the correspondence requirements of paragraphs (d)(1),
and that the correspondence or copy of (d)(2), and (d)(3) of § 1.217 have been met
the correspondence is the original cor- in the application; and the application
respondence or a true copy of the cor- is still pending. See § 2.27 of this title
respondence originally attempted to be for trademark files.
deposited with the USPS on the re- (b) All reissue applications, all appli-
quested filing date. The Office may re- cations in which the Office has accept-
quire additional evidence to determine ed a request to open the complete ap-
if the correspondence was refused by an plication to inspection by the public,
employee of the USPS due to an inter- and related papers in the application
ruption or emergency in Priority Mail file, are open to inspection by the pub-
Express® service. lic, and copies may be furnished upon
(i) Any person attempting to file cor- paying the fee therefor. The filing of
respondence under this section that reissue applications, other than contin-
was unable to be deposited with the ued prosecution applications under
USPS due to an interruption or emer- § 1.53(d) of reissue applications, will be
gency in Priority Mail Express® service announced in the Official Gazette. The
which has been so designated by the announcement shall include at least
Director, may petition the Director to the filing date, reissue application and
consider such correspondence as filed original patent numbers, title, class
on a particular date in the Office, pro- and subclass, name of the inventor,
vided that: name of the owner of record, name of
(1) The petition is filed in a manner the attorney or agent of record, and ex-
designated by the Director promptly amining group to which the reissue ap-
after the person becomes aware of the plication is assigned.
designated interruption or emergency (c) All requests for reexamination for
in Priority Mail Express® service; which all the requirements of § 1.510 or
(2) The petition includes the original § 1.915 have been satisfied will be an-
correspondence or a copy of the origi- nounced in the Official Gazette. Any re-
nal correspondence; and examinations at the initiative of the
(3) The petition includes a statement Director pursuant to § 1.520 will also be
which establishes, to the satisfaction announced in the Official Gazette. The
of the Director, that the correspond- announcement shall include at least
ence would have been deposited with the date of the request, if any, the re-
the USPS but for the designated inter- examination request control number or
ruption or emergency in Priority Mail the Director initiated order control
Express® service, and that the cor- number, patent number, title, class and
respondence or copy of the correspond- subclass, name of the inventor, name of
23
§ 1.12 37 CFR Ch. I (7–1–16 Edition)
the patent owner of record, and the ex- the public. Copies of any assignment
amining group to which the reexamina- records, digests, and indexes that are
tion is assigned. not available to the public shall be ob-
(d) All papers or copies thereof relat- tainable only upon written authority
ing to a reexamination proceeding of an inventor, the applicant, the as-
which have been entered of record in signee or an assignee of an undivided
the patent or reexamination file are part interest, or a patent practitioner
open to inspection by the general pub- of record, or upon a showing that the
lic, and copies may be furnished upon person seeking such information is a
paying the fee therefor. bona fide prospective or actual pur-
(e) Except as prohibited in § 41.6(b), chaser, mortgagee, or licensee of such
§ 42.14 or § 42.410(b), the file of any in- application, unless it shall be nec-
terference or trial before the Patent essary to the proper conduct of busi-
Trial and Appeal Board is open to pub- ness before the Office or as provided in
lic inspection and copies of the file this part.
may be obtained upon payment of the (c) Any request by a member of the
fee therefor. public seeking copies of any assign-
(35 U.S.C. 6; 15 U.S.C. 1113, 1123)
ment records of any pending or aban-
doned patent application preserved in
[46 FR 29181, May 29, 1981, as amended at 47 confidence under § 1.14, or any informa-
FR 41272, Sept. 17, 1982; 50 FR 9378, Mar. 7, tion with respect thereto, must:
1985; 60 FR 14518, Mar. 17, 1995; 62 FR 53181,
Oct. 10, 1997; 65 FR 57051, Sept. 20, 2000; 69 FR
(1) Be in the form of a petition in-
49997, Aug. 12, 2004; 70 FR 56126, Sept. 26, 2005; cluding the fee set forth in § 1.17(g); or
71 FR 44223, Aug. 4, 2006; 77 FR 46624, Aug. 6, (2) Include written authority grant-
2012] ing access to the member of the public
to the particular assignment records
§ 1.12 Assignment records open to pub- from an inventor, the applicant, the as-
lic inspection. signee or an assignee of an undivided
(a)(1) Separate assignment records part interest, or a patent practitioner
are maintained in the United States of record.
Patent and Trademark Office for pat- (d) An order for a copy of an assign-
ents and trademarks. The assignment ment or other document should iden-
records, relating to original or reissue tify the reel and frame number where
patents, including digests and indexes the assignment or document is re-
(for assignments recorded on or after corded. If a document is identified
May 1, 1957), and published patent ap- without specifying its correct reel and
plications, are open to public inspec- frame, an extra charge as set forth in
tion at the United States Patent and § 1.21(j) will be made for the time con-
Trademark Office, and copies of patent sumed in making a search for such as-
assignment records may be obtained signment.
upon request and payment of the fee (35 U.S.C. 6; 15 U.S.C. 1113, 1123)
set forth in § 1.19 of this chapter. See
§ 2.200 of this chapter regarding trade- [47 FR 41272, Sept. 17, 1982, as amended at 54
FR 6900, Feb. 15, 1989; 56 FR 65151, Dec. 13,
mark assignment records.
1991; 56 FR 66670, Dec. 24, 1991; 57 FR 29641,
(2) All records of assignments of pat- July 6, 1992; 60 FR 20221, Apr. 25, 1995; 61 FR
ents recorded before May 1, 1957, are 42802, Aug. 19, 1996; 65 FR 54657, Sept. 8, 2000;
maintained by the National Archives 65 FR 57051, Sept. 20, 2000; 68 FR 48288, Aug.
and Records Administration (NARA). 13, 2003; 69 FR 29877, May 26, 2004; 69 FR 56536,
The records are open to public inspec- Sept. 21, 2004; 77 FR 48812, Aug. 14, 2012]
tion. Certified and uncertified copies of
those assignment records are provided § 1.13 Copies and certified copies.
by NARA upon request and payment of (a) Non-certified copies of patents,
the fees required by NARA. and patent application publications
(b) Assignment records, digests, and and of any records, books, papers, or
indexes relating to any pending or drawings within the jurisdiction of the
abandoned patent application, which is United States Patent and Trademark
open to the public pursuant to § 1.11 or Office and open to the public, will be
for which copies or access may be sup- furnished by the United States Patent
plied pursuant to § 1.14, are available to and Trademark Office to any person,
24
and copies of other records or papers application may be provided to any

will be furnished to persons entitled person upon request and payment of
thereto, upon payment of the appro- the appropriate fee set forth in § 1.19(b).
priate fee. See § 2.201 of this chapter re- (iii) Published pending applications. A
garding copies of trademark records. copy of the application-as-filed, the file
(b) Certified copies of patents, patent contents of the application, or a spe-
application publications, and trade- cific document in the file of a pending
mark registrations and of any records, published application may be provided
books, papers, or drawings within the to any person upon request and pay-
jurisdiction of the United States Pat- ment of the appropriate fee set forth in
ent and Trademark Office and open to § 1.19(b). If a redacted copy of the appli-
the public or persons entitled thereto cation was used for the patent applica-
will be authenticated by the seal of the tion publication, the copy of the speci-
United States Patent and Trademark fication, drawings, and papers may be
Office and certified by the Director, or limited to a redacted copy. The Office
in his or her name, upon payment of will not provide access to the paper file
the fee for the certified copy. of a pending application that has been
[68 FR 48288, Aug. 13, 2003, as amended at 68 published, except as provided in para-
FR 71006, Dec. 22, 2003] graph (c) or (i) of this section.
(iv) Unpublished abandoned applica-
§ 1.14 Patent applications preserved in tions (including provisional applications)
confidence. that are identified or relied upon. The file
(a) Confidentiality of patent application contents of an unpublished, abandoned
information. Patent applications that application may be made available to
have not been published under 35 U.S.C. the public if the application is identi-
122(b) are generally preserved in con- fied in a U.S. patent, a statutory inven-
fidence pursuant to 35 U.S.C. 122(a). In- tion registration, a U.S. patent appli-
formation concerning the filing, pend- cation publication, an international
ency, or subject matter of an applica- publication of an international applica-
tion for patent, including status infor- tion under PCT Article 21(2), or a publi-
mation, and access to the application, cation of an international registration
will only be given to the public as set under Hague Agreement Article 10(3) of
forth in § 1.11 or in this section. an international design application
(1) Records associated with patent designating the United States. An ap-
applications (see paragraph (g) of this plication is considered to have been
section for international applications identified in a document, such as a pat-
and paragraph (j) of this section for ent, when the application number or
international design applications) may serial number and filing date, first
be available in the following situa- named inventor, title, and filing date
tions: or other application specific informa-
(i) Patented applications and statutory tion are provided in the text of the pat-
invention registrations. The file of an ap- ent, but not when the same identifica-
plication that has issued as a patent or tion is made in a paper in the file con-
published as a statutory invention reg- tents of the patent and is not included
istration is available to the public as in the printed patent. Also, the file
set forth in § 1.11(a). A copy of the pat- contents may be made available to the
ent application-as-filed, the file con- public, upon a written request, if ben-
tents of the application, or a specific efit of the abandoned application is
document in the file of such an applica- claimed under 35 U.S.C. 119(e), 120, 121,
tion may be provided upon request and 365(c), or 386(c) in an application that
payment of the appropriate fee set has issued as a U.S. patent, or has pub-
forth in § 1.19(b). lished as a statutory invention reg-
(ii) Published abandoned applications. istration, a U.S. patent application
The file of an abandoned published ap- publication, an international publica-
plication is available to the public as tion of an international application
set forth in § 1.11(a). A copy of the ap- under PCT Article 21(2), or a publica-
plication-as-filed, the file contents of tion of an international registration
the published application, or a specific under Hague Agreement Article 10(3). A

document in the file of the published copy of the application-as-filed, the file
25
§ 1.14 37 CFR Ch. I (7–1–16 Edition)
contents of the application, or a spe- 365(c), or 386(c) in an application that

cific document in the file of the appli- has issued as a U.S. patent, an applica-
cation may be provided to any person tion that has published as a statutory
upon written request and payment of invention registration, a U.S. patent
the appropriate fee (§ 1.19(b)). application publication, an inter-
(v) Unpublished pending applications national publication of an inter-
(including provisional applications) whose national application under PCT Article
benefit is claimed. A copy of the file con- 21(2), or a publication of an inter-
tents of an unpublished pending appli- national registration under Hague
cation may be provided to any person, Agreement Article 10(3), or are not
upon written request and payment of identified in a U.S. patent, a statutory
the appropriate fee (§ 1.19(b)), if the invention registration, a U.S. patent
benefit of the application is claimed application publication, an inter-
under 35 U.S.C. 119(e), 120, 121, 365(c), or national publication of an inter-
386(c) in an application that has issued national application under PCT Article
as a U.S. patent, or in an application 21(2), or a publication of an inter-
that has published as a statutory in- national registration under Hague
vention registration, a U.S. patent ap- Agreement Article 10(3) of an inter-
plication publication, an international national design application designating
publication of an international applica- the United States, are not available to
tion under PCT Article 21(2), or a publi- the public. If an application is identi-
cation of an international registration fied in the file contents of another ap-
under Hague Agreement Article 10(3). A plication, but not the published patent
copy of the application-as-filed or a application or patent itself, a granted
specific document in the file of the petition for access (see paragraph (i))
pending application may also be pro- or a power to inspect (see paragraph (c)
vided to any person upon written re- of this section) is necessary to obtain
quest and payment of the appropriate the application, or a copy of the appli-
fee (§ 1.19(b)). The Office will not pro- cation.
vide access to the paper file of a pend- (2) Information concerning a patent
ing application, except as provided in application may be communicated to
paragraph (c) or (i) of this section. the public if the patent application is
(vi) Unpublished pending applications identified in a published patent docu-
(including provisional applications) that ment or in an application as set forth
are incorporated by reference or otherwise in paragraphs (a)(1)(i) through (a)(1)(vi)
identified. A copy of the application as of this section. The information that
originally filed of an unpublished pend- may be communicated to the public
ing application may be provided to any (i.e., status information) includes:
person, upon written request and pay- (i) Whether the application is pend-
ment of the appropriate fee (§ 1.19(b)), if ing, abandoned, or patented;
the application is incorporated by ref- (ii) Whether the application has been
erence or otherwise identified in a U.S. published under 35 U.S.C. 122(b);
patent, a statutory invention registra- (iii) The application ‘‘numerical iden-
tion, a U.S. patent application publica- tifier’’ which may be:
tion, an international publication of an (A) The eight-digit application num-
international application under PCT ber (the two-digit series code plus the
Article 21(2), or a publication of an six-digit serial number); or
international registration under Hague (B) The six-digit serial number plus
Agreement Article 10(3) of an inter- any one of the filing date of the na-
national design application designating tional application, the international
the United States. The Office will not filing date, or date of entry into the
provide access to the paper file of a national stage; and
pending application, except as provided (iv) Whether another application
in paragraph (c) or (i) of this section. claims the benefit of the application
(vii) When a petition for access or a (i.e., whether there are any applica-
power to inspect is required. Applications tions that claim the benefit of the fil-
that were not published or patented, ing date under 35 U.S.C. 119(e), 120, 121,
that are not the subject of a benefit 365, or 386 of the application), and if
claim under 35 U.S.C. 119(e), 120, 121, there are any such applications, the
26
numerical identifier of the application, (2) The applicant is given notice and
the specified relationship between the an opportunity to object in writing
applications (e.g., continuation), within two months on the ground that
whether the application is pending, the decision discloses a trade secret or
abandoned or patented, and whether other confidential information. Any
the application has been published objection must identify the deletions
under 35 U.S.C. 122(b). in the text of the decision considered
(b) Electronic access to an application. necessary to protect the information,
Where a copy of the application file or or explain why the entire decision
access to the application may be made must be withheld from the public to
available pursuant to this section, the protect such information. An applicant
Office may at its discretion provide ac-
or party will be given time, not less
cess to only an electronic copy of the
than twenty days, to request reconsid-
specification, drawings, and file con-
tents of the application. eration and seek court review before
(c) Power to inspect a pending or aban- any portions of a decision are made
doned application. Access to an applica- public under this paragraph over his or
tion may be provided to any person if her objection.
the application file is available, and (f) Notice to inventor of the filing of an
the application contains written au- application. The Office may publish no-
thority (e.g., a power to inspect) grant- tice in the Official Gazette as to the fil-
ing access to such person. The written ing of an application on behalf of an in-
authority must be signed by: ventor by a person who otherwise
(1) The applicant; shows sufficient proprietary interest in
(2) A patent practitioner of record; the matter.
(3) The assignee or an assignee of an (g) International applications. (1) Cop-
undivided part interest; ies of international application files for
(4) The inventor or a joint inventor; international applications which des-
or ignate the U.S. and which have been
(5) A registered attorney or agent published in accordance with PCT Arti-
named in the papers accompanying the cle 21(2), or copies of a document in
application papers filed under § 1.53 or such application files, will be furnished
the national stage documents filed
in accordance with PCT Articles 30 and
under § 1.495, if a power of attorney has
38 and PCT Rules 94.2 and 94.3, upon
not been appointed under § 1.32.
written request including a showing
(d) Applications reported to Department
of Energy. Applications for patents that the publication of the application
which appear to disclose, purport to has occurred and that the U.S. was des-
disclose or do disclose inventions or ignated, and upon payment of the ap-
discoveries relating to atomic energy propriate fee (see § 1.19(b)), if:
are reported to the Department of En- (i) With respect to the Home Copy
ergy, which Department will be given (the copy of the international applica-
access to the applications. Such report- tion kept by the Office in its capacity
ing does not constitute a determina- as the Receiving Office, see PCT Arti-
tion that the subject matter of each cle 12(1)), the international application
application so reported is in fact useful was filed with the U.S. Receiving Of-
or is an invention or discovery, or that fice;
such application in fact discloses sub- (ii) With respect to the Search Copy
ject matter in categories specified by (the copy of an international applica-
42 U.S.C. 2181(c) and (d). tion kept by the Office in its capacity
(e) Decisions by the Director. Any deci- as the International Searching Author-
sion by the Director that would not ity, see PCT Article 12(1)), the U.S.
otherwise be open to public inspection acted as the International Searching
may be published or made available for Authority, except for the written opin-
public inspection if:
ion of the International Searching Au-
(1) The Director believes the decision
thority which shall not be available
involves an interpretation of patent
laws or regulations that would be of until the expiration of thirty months

precedential value; and from the priority date; or
27
§ 1.14 37 CFR Ch. I (7–1–16 Edition)
(iii) With respect to the Examination ticipating foreign intellectual property

Copy (the copy of an international ap- offices in accordance with their respec-
plication kept by the Office in its ca- tive agreements with the Office:
pacity as the International Prelimi- (i) A copy of the application-as-filed
nary Examining Authority), the United and its related bibliographic data;
States acted as the International Pre- (ii) A copy of the application-as-filed
liminary Examining Authority, an of any application the filing date of
International Preliminary Examina- which is claimed by the application in
tion Report has issued, and the United which written authority under this
States was elected. paragraph (h)(1) is filed and its related
(2) A copy of an English language bibliographic data; and
translation of a publication of an inter- (iii) The date of filing of the written
national application which has been authorization under this paragraph
filed in the United States Patent and (h)(1).
Trademark Office pursuant to 35 U.S.C.
(2) Access to the file contents of an
154(d)(4) will be furnished upon written
application may be provided to a for-
request including a showing that the
eign intellectual property office that
publication of the application in ac-
has imposed a requirement for infor-
cordance with PCT Article 21(2) has oc-
mation on a counterpart application
curred and that the U.S. was des-
filed with the foreign intellectual prop-
ignated, and upon payment of the ap-
erty office where the foreign intellec-
propriate fee (§ 1.19(b)(4)).
tual property office is a party to a bi-
(3) Access to international applica-
lateral or multilateral agreement with
tion files for international applications
which designate the U.S. and which the Office to provide the required infor-
have been published in accordance with mation from the application filed with
PCT Article 21(2), or copies of a docu- the Office and the application contains
ment in such application files, will be written authority granting such ac-
permitted in accordance with PCT Ar- cess. Written authority provided under
ticles 30 and 38 and PCT Rules 44ter.1, this paragraph (h)(2) will be treated as
94.2 and 94.3, upon written request in- authorizing the Office to provide the
cluding a showing that the publication following to all foreign intellectual
of the application has occurred and property offices in accordance with
that the U.S. was designated. their respective agreements with the
(4) In accordance with PCT Article Office:
30, copies of an international applica- (i) Bibliographic data related to the
tion-as-filed under paragraph (a) of this application; and
section will not be provided prior to (ii) Any content of the application
the international publication of the ap- file necessary to satisfy the foreign in-
plication pursuant to PCT Article 21(2). tellectual property office requirement
(5) Access to international applica- for information imposed on the coun-
tion files under paragraphs (a)(1)(i) terpart application as indicated in the
through (a)(1)(vi) and (g)(3) of this sec- respective agreement.
tion will not be permitted with respect (3) Written authority provided under
to the Examination Copy in accordance paragraphs (h)(1) and (h)(2) of this sec-
with PCT Article 38. tion must include the title of the in-
(h) Access by a Foreign Intellectual vention (§ 1.72(a)), comply with the re-
Property Office. (1) Access to an applica- quirements of paragraph (c) of this sec-
tion-as-filed may be provided to any tion, and be submitted on an applica-
foreign intellectual property office par- tion data sheet (§ 1.76) or on a separate
ticipating with the Office in a bilateral document (§ 1.4(c)). The written author-
or multilateral priority document ex- ity provided under these paragraphs
change agreement (participating for- should be submitted before filing any
eign intellectual property office), if the subsequent foreign application in
application contains written authority which priority is claimed to the appli-
granting such access. Written author- cation.
ity provided under this paragraph (h)(1) (i) Access or copies in other cir-
will be treated as authorizing the Of- cumstances. The Office, either sua
fice to provide the following to all par- sponte or on petition, may also provide
28
access or copies of all or part of an ap- § 1.15 [Reserved]

plication if necessary to carry out an
Act of Congress or if warranted by FEES AND PAYMENT OF MONEY
other special circumstances. Any peti-
tion by a member of the public seeking AUTHORITY: Sections 1.16 through 1.22 also
access to, or copies of, all or part of issued under 35 U.S.C. 41, 111, 119, 120, 132(b),
156, 157, 255, 302, and 311, Public Laws 103–465,
any pending or abandoned application 106–113, and 112–29.
preserved in confidence pursuant to
paragraph (a) of this section, or any re- § 1.16 National application filing,
lated papers, must include: search, and examination fees.
(1) The fee set forth in § 1.17(g); and (a) Basic fee for filing each applica-
(2) A showing that access to the ap- tion under 35 U.S.C. 111 for an original
plication is necessary to carry out an patent, except design, plant, or provi-
Act of Congress or that special cir- sional applications:
cumstances exist which warrant peti- By a micro entity (§ 1.29) ....... $70.00
tioner being granted access to all or By a small entity (§ 1.27(a)) ... 140.00
part of the application. By a small entity (§ 1.27(a)) if
(j) International design applications. (1) the application is sub-
With respect to an international design mitted in compliance with
application maintained by the Office in the Office electronic filing
its capacity as a designated office system (§ 1.27(b)(2)) ............. 70.00
(§ 1.1003) for national processing, the By other than a small or
records associated with the inter- micro entity ....................... 280.00
national design application may be
(b) Basic fee for filing each applica-
made available as provided under para- tion under 35 U.S.C. 111 for an original
graphs (a) through (i) of this section. design patent:
(2) With respect to an international
By a micro entity (§ 1.29) ....... $45.00
design application maintained by the
By a small entity (§ 1.27(a)) ... 90.00
Office in its capacity as an office of in-
By other than a small or
direct filing (§ 1.1002), the records of the
micro entity ....................... 180.00
international design application may
be made available under paragraph (c) Basic fee for filing each applica-
(j)(1) of this section where contained in tion for an original plant patent:
the file of the international design ap- By a micro entity (§ 1.29) ....... $45.00
plication maintained by the Office for By a small entity (§ 1.27(a)) ... 90.00
national processing. Also, if benefit of By other than a small or
the international design application is micro entity ....................... 180.00
claimed under 35 U.S.C. 386(c) in a U.S.
(d) Basic fee for filing each provi-
patent or published application, the
sional application:
file contents of the application may be
made available to the public, or the file By a micro entity (§ 1.29) ....... $65.00
contents of the application, a copy of By a small entity (§ 1.27(a)) ... 130.00
the application-as-filed, or a specific By other than a small or
document in the file of the application micro entity ....................... 260.00
may be provided to any person upon (e) Basic fee for filing each applica-
written request and payment of the ap- tion for the reissue of a patent:
propriate fee (§ 1.19(b)). By a micro entity (§ 1.29) ....... $70.00
[68 FR 38624, June 30, 2003, as amended at 68 By a small entity (§ 1.27(a)) ... 140.00
FR 59886, Oct. 20, 2003; 68 FR 67805, Dec. 4, By other than a small or
2003; 68 FR 71006, Dec. 22, 2003; 69 FR 49997, micro entity ....................... 280.00
Aug. 12, 2004; 69 FR 56536, Sept. 21, 2004; 72 FR
(f) Surcharge for filing the basic fil-
1667, Jan. 16, 2007; 77 FR 48812, Aug. 14, 2012;
78 FR 11052, Feb. 14, 2013; 80 FR 17953, Apr. 2,
ing fee, search fee, examination fee, or
2015; 80 FR 65655, Oct. 27, 2015] inventor’s oath or declaration on a
date later than the filing date of the
application, an application that does

not contain at least one claim on the
29
§ 1.16 37 CFR Ch. I (7–1–16 Edition)
filing date of the application, or an ap- By other than a small or

plication filed by reference to a pre- micro entity ....................... 600.00
viously filed application under § 1.57(a),
(l) Search fee for each application
except provisional applications:
under 35 U.S.C. 111 for an original de-
By a micro entity (§ 1.29) ....... $35.00 sign patent:
By a small entity (§ 1.27(a)) ... 70.00 By a micro entity (§ 1.29) ....... $30.00
By other than a small or By a small entity (§ 1.27(a)) ... 60.00
micro entity ....................... 140.00 By other than a small or
(g) Surcharge for filing the basic fil- micro entity ....................... 120.00
ing fee or cover sheet (§ 1.51(c)(1)) on a (m) Search fee for each application
date later than the filing date of the for an original plant patent:
provisional application: By a micro entity (§ 1.29) ....... $95.00
By a micro entity (§ 1.29) ....... $15.00 By a small entity (§ 1.27(a)) ... 190.00
By a small entity (§ 1.27(a)) ... 30.00 By other than a small or
By other than a small or micro entity ....................... 380.00
micro entity ....................... 60.00 (n) Search fee for each application
(h) In addition to the basic filing fee for the reissue of a patent:
in an application, other than a provi- By a micro entity (§ 1.29) ....... $150.00
sional application, for filing or later By a small entity (§ 1.27(a)) ... 300.00
presentation at any other time of each By other than a small or
claim in independent form in excess of micro entity ....................... 600.00
3:
(o) Examination fee for each applica-
By a micro entity (§ 1.29) ....... $105.00 tion filed under 35 U.S.C. 111 for an
By a small entity (§ 1.27(a)) ... 210.00 original patent, except design, plant, or
By other than a small or provisional applications:
micro entity ....................... 420.00 By a micro entity (§ 1.29) ....... $180.00
(i) In addition to the basic filing fee By a small entity (§ 1.27(a)) ... 360.00
in an application, other than a provi- By other than a small or
sional application, for filing or later micro entity ....................... 720.00
presentation at any other time of each (p) Examination fee for each applica-
claim (whether dependent or inde- tion under 35 U.S.C. 111 for an original
pendent) in excess of 20 (note that design patent:
§ 1.75(c) indicates how multiple depend- By a micro entity (§ 1.29) ....... $115.00
ent claims are considered for fee cal- By a small entity (§ 1.27(a)) ... 230.00
culation purposes): By other than a small or
By a micro entity (§ 1.29) ....... $20.00 micro entity ....................... 460.00
By a small entity (§ 1.27(a)) ... 40.00 (q) Examination fee for each applica-
By other than a small or tion for an original plant patent:
micro entity ....................... 80.00
By a micro entity (§ 1.29) ....... $145.00
(j) In addition to the basic filing fee By a small entity (§ 1.27(a)) ... 290.00
in an application, other than a provi- By other than a small or
sional application, that contains, or is micro entity ....................... 580.00
amended to contain, a multiple depend-
(r) Examination fee for each applica-
ent claim, per application:
tion for the reissue of a patent:
By a micro entity (§ 1.29) ....... $195.00 By a micro entity (§ 1.29) ....... $540.00
By a small entity (§ 1.27(a)) ... 390.00 By a small entity (§ 1.27(a)) ... 1,080.00
By other than a small or By other than a small or
micro entity ....................... 780.00 micro entity ....................... 2,160.00
(k) Search fee for each application (s) Application size fee for any appli-
filed under 35 U.S.C. 111 for an original cation filed under 35 U.S.C. 111 for the
patent, except design, plant, or provi- specification and drawings which ex-
sional applications: ceed 100 sheets of paper, for each addi-
By a micro entity (§ 1.29) ....... $150.00 tional 50 sheets or fraction thereof:

By a small entity (§ 1.27(a)) ... 300.00 By a micro entity (§ 1.29) ....... $100.00
30
By a small entity (§ 1.27(a)) ... 200.00 (c) For filing a request for prioritized
By other than a small or examination under § 1.102(e):
micro entity ....................... 400.00 By a micro entity (§ 1.29) ...... $1,000.00
(t) Non-electronic filing fee for any By a small entity (§ 1.27(a)) .. $2,000.00
application under 35 U.S.C. 111(a) that By other than a small or
is filed on or after November 15, 2011, micro entity ...................... $4,000.00
other than by the Office electronic fil- (d) For correction of inventorship in
ing system, except for a reissue, design, an application after the first action on
or plant application: the merits:
By a micro entity (§ 1.29) ...... $150.00
By a small entity (§ 1.27(a)) ... $200.00 By a small entity (§ 1.27(a)) .. $300.00
By other than a small entity $400.00 By other than a small or
NOTE TO § 1.16: See §§ 1.445, 1.482 and 1.492 micro entity ...................... $600.00
for international application filing and proc- (e) To request continued examination
essing fees. pursuant to § 1.114:
[70 FR 3887, Jan. 27, 2005, as amended at 70 (1) For filing a first request for con-
FR 30365, May 26, 2005; 72 FR 46901, Aug. 22, tinued examination pursuant to § 1.114
2007; 73 FR 47540, Aug. 14, 2008; 76 FR 70653, in an application:
Nov. 15, 2011; 77 FR 48812, Aug. 14, 2012; 77 FR
54365, Sept. 5, 2012; 78 FR 4284, Jan. 18, 2013; By a micro entity (§ 1.29) ...... $300.00
78 FR 62395, Oct. 21, 2013; 80 FR 17954, Apr. 2, By a small entity (§ 1.27(a)) .. $600.00
2015] By other than a small or
micro entity ...................... $1,200.00
§ 1.17 Patent application and reexam-
ination processing fees. (2) For filing a second or subsequent
request for continued examination pur-
(a) Extension fees pursuant to suant to § 1.114 in an application:
§ 1.136(a):
By a micro entity (§ 1.29) ...... $425.00
(1) For reply within first month:
By a small entity (§ 1.27(a)) .. $850.00
By a micro entity (§ 1.29) ...... $50.00 By other than a small or
By a small entity (§ 1.27(a)) .. $100.00 micro entity ...................... $1,700.00
micro entity ...................... $200.00 (f) For filing a petition under one of
the following sections which refers to
(2) For reply within second month: this paragraph:
By a micro entity (§ 1.29) ...... $150.00
By a small entity (§ 1.27(a)) .. $300.00 By a micro entity (§ 1.29) ......... $100.00
By other than a small or By a small entity (§ 1.27(a)) ...... 200.00
micro entity ...................... $600.00 By other than a small or micro
(3) For reply within third month: entity ...................................... 400.00
By a micro entity (§ 1.29) ...... $350.00 § 1.36(a)—for revocation of a power of
By a small entity (§ 1.27(a)) .. $700.00 attorney by fewer than all of the appli-
By other than a small or cants.
micro entity ...................... $1,400.00 § 1.53(e)—to accord a filing date.
§ 1.182—for decision on a question not
(4) For reply within fourth month: specifically provided for in an applica-
By a micro entity (§ 1.29) ...... $550.00 tion for patent.
By a small entity (§ 1.27(a)) .. $1,100.00 § 1.183—to suspend the rules in an ap-
By other than a small or plication for patent.
micro entity ...................... $2,200.00 § 1.741(b)—to accord a filing date to
an application under § 1.740 for exten-
(5) For reply within fifth month:
sion of a patent term.
By a micro entity (§ 1.29) ...... $750.00 § 1.1023—to review the filing date of
By a small entity (§ 1.27(a)) .. $1,500.00 an international design application.
By other than a small or (g) For filing a petition under one of
micro entity ...................... $3,000.00 the following sections which refers to
this paragraph:
(b) For fees in proceedings before the

Patent Trial and Appeal Board, see
§ 41.20 and § 42.15 of this title. By a micro entity (§ 1.29) ......... $50.00
31
§ 1.17 37 CFR Ch. I (7–1–16 Edition)
By a small entity (§ 1.27(a)) ...... 100.00 (i) Processing fees. (1) For taking ac-
By other than a small or micro tion under one of the following sections
entity ...................................... 200.00 which refers to this paragraph:
§ 1.12—for access to an assignment
record. By a micro entity (§ 1.29) ......... $35.00
§ 1.14—for access to an application. By a small entity (§ 1.27(a)) ...... 70.00
By other than a small or micro
§ 1.46—for filing an application on be-
entity ...................................... 140.00
half of an inventor by a person who
otherwise shows sufficient proprietary § 1.28(c)(3)—for processing a non-
interest in the matter. itemized fee deficiency based on an
§ 1.55(f)—for filing a belated certified error in small entity status.
copy of a foreign application. § 1.29(k)(3)—for processing a non-
§ 1.55(g)—for filing a belated certified itemized fee deficiency based on an
copy of a foreign application. error in micro entity status.
§ 1.57(a)—for filing a belated certified § 1.41(b)—for supplying the name or
copy of a foreign application. names of the inventor or joint inven-
§ 1.59—for expungement of informa- tors in an application without either
tion. an application data sheet or the inven-
§ 1.103(a)—to suspend action in an ap- tor’s oath or declaration, except in pro-
plication. visional applications.
§ 1.136(b)—for review of a request for § 1.48—for correcting inventorship,
extension of time when the provisions except in provisional applications.
of § 1.136(a) are not available. § 1.52(d)—for processing a nonprovi-
§ 1.377—for review of decision refusing sional application filed with a speci-
to accept and record payment of a fication in a language other than
maintenance fee filed prior to expira- English.
tion of a patent. § 1.53(c)(3)—t convert a provisional
§ 1.550(c)—for patent owner requests application filed under § 1.53(c) into a
for extension of time in ex parte reex- nonprovisional application under
amination proceedings. § 1.53(b).
§ 1.71(g)(2)—for processing a belated
§ 1.956—for patent owner requests for
amendment under § 1.71(g).
extension of time in inter partes reex-
§ 1.102(e)—for requesting prioritized
amination proceedings.
examination of an application.
§ 5.12—for expedited handling of a for-
§ 1.103(b)—for requesting limited sus-
eign filing license.
pension of action, continued prosecu-
§ 5.15—for changing the scope of a li- tion application for a design patent
cense. (§ 1.53(d)).
§ 5.25—for retroactive license. § 1.103(c)—for requesting limited sus-
(h) For filing a petition under one of pension of action, request for contin-
the following sections which refers to ued examination (§ 1.114).
this paragraph: § 1.103(d)—for requesting deferred ex-
By a micro entity (§ 1.29) ...... $35.00 amination of an application.
By a small entity (§ 1.27(a)) .. $70.00 § 1.291(c)(5)—for processing a second
By other than a small or or subsequent protest by the same real
micro entity ...................... $140.00 party in interest.
§ 3.81—for a patent to issue to as-
§ 1.19(g)—to request documents in a
signee, assignment submitted after
form other than provided in this part.
payment of the issue fee.
§ 1.84—for accepting color drawings or
photographs. (2) For taking action under
§ 1.91—for entry of a model or exhibit. one of the following sec-
§ 1.102(d)—to make an application tions which refers to this
special. paragraph .......................... $130.00
§ 1.138(c)—to expressly abandon an ap- § 1.217—for processing a redacted copy
plication to avoid publication. of a paper submitted in the file of an
§ 1.313—to withdraw an application application in which a redacted copy
from issue. was submitted for the patent applica-

§ 1.314—to defer issuance of a patent. tion publication.
32
§ 1.221—for requesting voluntary pub- § 1.48—for correction of inventorship

lication or republication of an applica- in a provisional application.
tion. § 1.53(c)(2)—to convert a nonprovi-
(j) [Reserved] sional application filed under § 1.53(b)
(k) For filing a request for expedited to a provisional application under
examination under § 1.155(a): § 1.53(c).
By a micro entity (§ 1.29) ...... $225.00 (r) For entry of a submission after
By a small entity (§ 1.27(a)) .. $450.00 final rejection under § 1.129(a):
By other than a small or By a micro entity (§ 1.29) ...... $210.00
micro entity. ..................... $900.00 By a small entity (§ 1.27(a)) .. $420.00
(l) [Reserved] micro entity ...................... $840.00
(m) For filing a petition for the re-
vival of an abandoned application for a (s) For each additional invention re-
patent, for the delayed payment of the quested to be examined under § 1.129(b):
fee for issuing each patent, for the de- By a micro entity (§ 1.29) ...... $210.00
layed response by the patent owner in By a small entity (§ 1.27(a)) .. $420.00
any reexamination proceeding, for the By other than a small or
delayed payment of the fee for main- micro entity ...................... $840.00
taining a patent in force, for the de-
(t) For filing a petition to convert an
layed submission of a priority or ben-
international design application to a
efit claim, for the extension of the
design application under 35 U.S.C.
twelve-month (six-month for designs)
chapter 16 (§ 1.1052): $180.00.
period for filing a subsequent applica-
tion (§§ 1.55(c), 1.55(e), 1.78(b), 1.78(c), [78 FR 17105, Mar. 20, 2013, as amended at 78
1.78(e), 1.137, 1.378, and 1.452), or for fil- FR 62395, Oct. 21, 2013; 78 FR 75252, Dec. 11,
ing a petition to excuse applicant’s 2013; 80 FR 17954, Apr. 2, 2015]
failure to act within prescribed time
§ 1.18 Patent post allowance (including
limits in an international design appli- issue) fees.
cation (§ 1.1051):
(a) Issue fee for issuing each original
By a small entity (§ 1.27(a)) patent, except a design or plant patent,
or micro entity (§ 1.29) ..... $850.00 or for issuing each reissue patent:
By other than a small or (1) For an issue fee paid on or after
micro entity .................... 1,700.00 January 1, 2014:
By a micro entity (§ 1.29) ...... $240.00
(n) [Reserved] By a small entity (§ 1.27(a)) .. 480.00
(o) For every ten items or fraction By other than a small or
thereof in a third-party submission micro entity ...................... 960.00
under § 1.290:
(2) For an issue fee paid before Janu-
By a small entity (§ 1.27(a))
ary 1, 2014:
or micro entity (§ 1.29) ...... $90.00
By other than a small entity $180.00 By a micro entity (§ 1.29) ...... $445.00
By a small entity (§ 1.27(a)) .. 890.00
(p) For an information disclosure By other than a small or
statement under § 1.97(c) or (d): micro entity ...................... 1,780.00
By a micro entity (§ 1.29) ...... $45.00
(b) Issue fee for issuing an original
By a small entity (§ 1.27(a)) .. $90.00
design patent:
(1) For an issue fee paid on or after
micro entity ...................... $180.00
January 1, 2014:
(q) Processing fee for taking
action under one of the By a micro entity (§ 1.29) ...... $140.00
following sections which By a small entity (§ 1.27(a)) .. 280.00
refers to this paragraph .... $50.00 By other than a small or
micro entity ...................... 560.00
§ 1.41—to supply the name or names
of the inventor or inventors after the (2) For an issue fee paid before Janu-
filing date without a cover sheet as ary 1, 2014:
prescribed by § 1.51(c)(1) in a provi- By a micro entity (§ 1.29) ...... $255.00

sional application. By a small entity (§ 1.27(a)) .. 510.00
33
§ 1.19 37 CFR Ch. I (7–1–16 Edition)
By other than a small or (a) Uncertified copies of patent appli-

micro entity ...................... 1,020.00 cation publications and patents:
(1) Printed copy of the paper portion
(3) For an international design appli- of a patent application publication or
cation designating the United States, patent including a design patent, stat-
where an issue fee is paid through the utory invention registration, or defen-
International Bureau (Hague Agree- sive publication document. Service in-
ment Rule 12(3)(c)) as an alternative to cludes preparation of copies by the Of-
paying the issue fee under paragraph fice within two to three business days
(b)(1) of this section: The amount speci- and delivery by United States Postal
fied on the Web site of the World Intel- Service; and preparation of copies by
lectual Property Organization, cur- the Office within one business day of
rently available at http://www.wipo.int/ receipt and delivery to an Office Box or
hague, at the time the fee is paid. by electronic means (e.g., facsimile,
(c) Issue fee for issuing an original electronic mail): $3.00.
plant patent: (2) Printed copy of a plant patent in
(1) For an issue fee paid on or after color: $15.00.
January 1, 2014: (3) Color copy of a patent (other than
By a micro entity (§ 1.29) ...... $190.00 a plant patent) or statutory invention
By a small entity (§ 1.27(a)) .. 380.00 registration containing a color draw-
By other than a small or ing: $25.00.
micro entity ...................... 760.00 (b) Copies of Office documents to be
(2) For an issue fee paid before Janu- provided in paper, or in electronic
ary 1, 2014: form, as determined by the Director
(for other patent-related materials see
By a micro entity (§ 1.29) ...... $350.00 § 1.21(k)):
By a small entity (§ 1.27(a)) .. 700.00 (1) Copy of a patent application as
By other than a small or filed, or a patent-related file wrapper
micro entity ...................... 1,400.00 and contents, stored in paper in a paper
(d) file wrapper, in an image format in an
(1) Publication fee on or image file wrapper, or if color docu-
after January 1, 2014 ......... $0.00 ments, stored in paper in an Artifact
(2) Publication fee before Folder:
January 1, 2014 .................. 300.00 (i) If provided on paper:
(3) Republication fee (A) Application as filed: $20.00.
(§ 1.221(a)) .......................... 300.00 (B) File wrapper and contents of 400
(e) For filing an application or fewer pages: $200.00.
for patent term adjust- (C) Additional fee for each additional
ment under § 1.705: ............. $200.00. 100 pages or portion thereof of file
(f) For filing a request for wrapper and contents: $40.00.
reinstatement of all or (D) Individual application docu-
part of the term reduced ments, other than application as filed,
pursuant to § 1.704(b) in an per document: $25.00.
application for patent (ii) If provided on compact disc or
term adjustment other physical electronic medium in
under§ 1.705: ....................... $400.00. single order:
(A) Application as filed: $20.00.
[78 FR 4286, Jan. 18, 2013, as amended at 80 (B) File wrapper and contents, first
FR 17955, Apr. 2, 2015] physical electronic medium: $55.00.
(C) Additional fee for each con-
§ 1.19 Document supply fees. tinuing physical electronic medium in
The United States Patent and Trade- the single order of paragraph
mark Office will supply copies of the (b)(1)(ii)(B) of this section: $15.00.
following patent-related documents (iii) If provided electronically (e.g.,
upon payment of the fees indicated. by electronic transmission) other than
Paper copies will be in black and white on a physical electronic medium as
specified in paragraph (b)(1)(ii) of this
unless the original document is in

color, a color copy is requested and the section:
fee for a color copy is paid. (A) Application as filed: $20.00.
34
(B) File wrapper and contents: $55.00. § 1.20 Post issuance fees.
(iv) If provided to a foreign intellec- (a) For providing a certifi-
tual property office pursuant to a bi- cate of correction for ap-
lateral or multilateral agreement (see plicant’s mistake (§ 1.323) $100.00
§ 1.14(h)): $0.00. (b) Processing fee for cor-
(2) Copy of patent-related file wrap- recting inventorship in a
per contents that were submitted and patent (§ 1.324) .................. $130.00
are stored on compact disc or other (c) In reexamination pro-
electronic form (e.g., compact discs ceedings:
stored in an Artifact Folder), other (1) For filing a request for
than as available in paragraph (b)(1) of ex parte reexamination
this section: (§ 1.510(a)):
(i) If provided on compact disc or By a micro entity
other physical electronic medium in a (§ 1.29) ........................ $3,000.00
single order: By a small entity
(A) First physical electronic medium (§ 1.27(a)) .................... $6,000.00
in a single order: $55.00. By other than a small
(B) Additional fee for each con- or micro entity .......... $12,000.00
tinuing physical electronic medium in (2) [Reserved]
the single order of this paragraph (3) For filing with a request
(b)(2)(i): $15.00. for reexamination or
(ii) If provided electronically other later presentation at any
than on a physical electronic medium other time of each claim
per order: $55.00. in independent form in
(3) Copy of Office records, except cop- excess of 3 and also in ex-
ies available under paragraph (b)(1) or cess of the number of
(2) of this section: $25.00. claims in independent
(4) For assignment records, abstract form in the patent under
of title and certification, per patent: reexamination:
$25.00. By a micro entity
(c) Library service (35 U.S.C. 13): For (§ 1.29) ........................ $105.00
providing to libraries copies of all pat- By a small entity
ents issued annually, per annum: $50.00. (§ 1.27(a)) .................... $210.00
(d) For list of all United States pat- By other than a small
ents and statutory invention registra- or micro entity .......... $420.00
tions in a subclass: $3.00. (4) For filing with a request
(e) Uncertified statement as to status for reexamination or
of the payment of maintenance fees later presentation at any
due on a patent or expiration of a pat- other time of each claim
ent: $10.00. (whether dependent or
independent) in excess of
(f) Uncertified copy of a non-United
20 and also in excess of
States patent document, per document: the number of claims in
$25.00. the patent under reexam-
(g) Petitions for documents in a form ination (note that § 1.75(c)
other than that provided by this part, indicates how multiple
or in a form other than that generally dependent claims are con-
provided by the Director, will be de- sidered for fee calculation
cided in accordance with the merits of purposes):
each situation. Any petition seeking a By a micro entity
decision under this section must be ac- (§ 1.29) ........................ $20.00
companied by the petition fee set forth By a small entity
in § 1.17(h) and, if the petition is grant- (§ 1.27(a)) .................... $40.00
ed, the documents will be provided at By other than a small
cost. or micro entity .......... $80.00
[78 FR 4287, Jan. 18, 2013, as amended at 80

FR 65655, Oct. 27, 2015]
35
§ 1.20 37 CFR Ch. I (7–1–16 Edition)
(5) If the excess claims fees (f) For maintaining an

required by paragraphs original or reissue patent,
(c)(3) and (4) of this sec- except a design or plant
tion are not paid with the patent, based on an appli-
request for reexamination cation filed on or after
or on later presentation December 12, 1980, in
of the claims for which force beyond eight years,
the excess claims fees are the fee being due by seven
due, the fees required by years and six months
paragraphs (c)(3) and (4) after the original grant:
must be paid or the By a micro entity
claims canceled by (§ 1.29) ........................ $900.00
amendment prior to the By a small entity
expiration of the time pe- (§ 1.27(a)) .................... $1,800.00
riod set for reply by the By other than a small
Office in any notice of fee or micro entity .......... $3,600.00
deficiency in order to (g) For maintaining an
avoid abandonment. original or reissue patent,
(6) For filing a petition in a except a design or plant
reexamination pro- patent, based on an appli-
ceeding, except for those cation filed on or after
specifically enumerated December 12, 1980, in
in §§ 1.550(i) and 1.937(d): force beyond twelve
By a micro entity years, the fee being due
(§ 1.29) ........................ $485.00 by eleven years and six
By a small entity months after the original
(§ 1.27(a)) .................... $970.00 grant:
By other than a small
By a micro entity
or micro entity .......... $1,940.00
(§ 1.29) ........................ $1,850.00
(7) For a refused request for
By a small entity
ex parte reexamination
(§ 1.27(a)) .................... $3,700.00
under § 1.510 (included in
the request for ex parte By other than a small
reexamination fee at or micro entity .......... $7,400.00
§ 1.20(c)(1)): (h) Surcharge for paying a
By a micro entity maintenance fee during
(§ 1.29) ........................ $900.00 the six-month grace pe-
By a small entity riod following the expira-
(§ 1.27(a)) .................... $1,800.00 tion of three years and six
By other than a small months, seven years and
or micro entity .......... $3,600.00 six months, and eleven
(d) For filing each statu- years and six months
tory disclaimer (§ 1.321) ... $160.00 after the date of the
(e) For maintaining an original grant of a patent
original or reissue patent, based on an application
except a design or plant filed on or after December
patent, based on an appli- 12, 1980:
cation filed on or after By a micro entity
December 12, 1980, in (§ 1.29) ........................ $40.00
force beyond four years, By a small entity
the fee being due by three (§ 1.27(a)) .................... $80.00
years and six months By other than a small
after the original grant: or micro entity .......... $160.00
By a micro entity (i) [Reserved]
(§ 1.29) ........................ $400.00 (j) For filing an application
By a small entity for extension of the term
(§ 1.27(a)) .................... $800.00 of a patent.

By other than a small Application for extension
or micro entity .......... $1,600.00 under § 1.740 ..................... $1,120.00
36
Initial application for in- (1) For admission to examination for

terim extension under registration to practice:
§ 1.790 ............................... $420.00 (i) Application Fee (non-refundable):
Subsequent application for $40.00.
interim extension under (ii) Registration examination fee.
§ 1.790 ............................... $220.00 (A) For test administration by com-
(k) In supplemental exam- mercial entity: $200.00.
ination proceedings: (B) For test administration by the
(1) For processing and USPTO: $450.00.
treating a request for sup- (2) On registration to practice or
plemental examination: grant of limited recognition under
By a micro entity § 11.9(b) or (c): $100.00.
(§ 1.29) ........................ $1,100.00 (3) [Reserved]
By a small entity (4) For certificate of good standing as
(§ 1.27(a)) .................... $2,200.00 an attorney or agent: $10.00.
By other than a small (i) Suitable for framing: $20.00.
or micro entity .......... $4,400.00 (ii) [Reserved]
(2) For ex parte reexamina- (5) For review of decision:
tion ordered as a result of (i) By the Director of Enrollment and
a supplemental examina- Discipline under § 11.2(c): $130.00.
tion proceeding: (ii) Of the Director of Enrollment and
By a micro entity Discipline under § 11.2(d): $130.00.
(§ 1.29) ........................ $3,025.00 (6)–(8) [Reserved]
By a small entity (9)(i) Delinquency fee: $50.00.
(§ 1.27(a)) .................... $6,050.00 (ii) Administrative reinstatement
By other than a small fee: $100.00.
or micro entity .......... $12,100.00 (10) On application by a person for
(3) For processing and recognition or registration after dis-
treating, in a supple- barment or suspension on ethical
mental examination pro- grounds, or resignation pending dis-
ceeding, a non-patent ciplinary proceedings in any other ju-
document over 20 sheets risdiction; on application by a person
in length, per document: for recognition or registration who is
(i) Between 21 and 50 sheets: asserting rehabilitation from prior con-
By a micro entity duct that resulted in an adverse deci-
(§ 1.29) ........................ $45.00 sion in the Office regarding the per-
By a small entity son’s moral character; and on applica-
(§ 1.27(a)) .................... $90.00 tion by a person for recognition or reg-
By other than a small istration after being convicted of a fel-
or micro entity. ......... $180.00 ony or crime involving moral turpitude
(ii) For each additional 50 or breach of fiduciary duty; on petition
sheets or a fraction therefor reinstatement by a person excluded
of: or suspended on ethical grounds, or ex-
By a micro entity cluded on consent from practice before
(§ 1.29) ........................ $70.00 the Office: $1,600.00.
By a small entity (b) Deposit accounts:
(§ 1.27(a)) .................... $140.00 (1) For establishing a deposit ac-
By other than a small count—$10.00
or micro entity .......... $280.00 (2) Service charge for each month
when the balance at the end of the
[78 FR 17106, Mar. 20, 2013, as amended at 78 month is below $1,000—$25.00
FR 62395, Oct. 21, 2013] (3) Service charge for each month
when the balance at the end of the
§ 1.21 Miscellaneous fees and charges. month is below $300 for restricted sub-
The Patent and Trademark Office has scription deposit accounts used exclu-
established the following fees for the sively for subscription order of patent
copies as issued—$25.00
services indicated:
(a) Registration of attorneys and (c) [Reserved]
agents: (d) [Reserved]
37
§ 1.22 37 CFR Ch. I (7–1–16 Edition)
(e) International type search reports: tion, patent, or other proceeding in

For preparing an international type such a manner that it is clear for
search report of an international type which purpose the fees are paid. The
search made at the time of the first ac- Office may return fees that are not
tion on the merits in a national patent itemized as required by this paragraph.
application: $40.00. The provisions of § 1.5(a) do not apply
(f) [Reserved] to the resubmission of fees returned
(g) Self-service copy charge, per page: pursuant to this paragraph.
$0.25.
(h) For recording each assignment, [68 FR 48288, Aug. 13, 2003]
agreement, or other paper relating to
the property in a patent or application, § 1.23 Methods of payment.
per property: (a) All payments of money required
(1) If submitted electronically, on or for United States Patent and Trade-
after January 1, 2014: $0.00. mark Office fees, including fees for the
(2) If not submitted electronically: processing of international applica-
$40.00. tions (§ 1.445), shall be made in U.S. dol-
(i) Publication in Official Gazette: lars and in the form of a cashier’s or
For publication in the Official Gazette
certified check, Treasury note, na-
of a notice of the availability of an ap-
tional bank notes, or United States
plication or a patent for licensing or
Postal Service money order. If sent in
sale: Each application or patent: $25.00.
(j) Labor charges for services, per any other form, the Office may delay
hour or fraction thereof: $40.00. or cancel the credit until collection is
(k) For items and services that the made. Checks and money orders must
Director finds may be supplied, for be made payable to the Director of the
which fees are not specified by statute United States Patent and Trademark
or by this part, such charges as may be Office. (Checks made payable to the
determined by the Director with re- Commissioner of Patents and Trade-
spect to each such item or service: Ac- marks will continue to be accepted.)
tual cost. Payments from foreign countries must
(l) [Reserved] be payable and immediately negotiable
(m) For processing each payment rein the United States for the full
fused (including a check returned ‘‘un- amount of the fee required. Money sent
paid’’) or charged back by a financial to the Office by mail will be at the risk
institution—$50.00. of the sender, and letters containing
(n) For handling an application in money should be registered with the
which proceedings are terminated pur- United States Postal Service.
suant to § 1.53(e): $130.00. (b) Payments of money required for
EDITORIAL NOTE: For FEDERAL REGISTER ci- United States Patent and Trademark
tations affecting § 1.21, see the List of CFR Office fees may also be made by credit
Sections Affected, which appears in the card, except for replenishing a deposit
Finding Aids section of the printed volume
and at www.fdsys.gov.
account. Payment of a fee by credit
card must specify the amount to be
§ 1.22 Fees payable in advance. charged to the credit card and such
(a) Patent fees and charges payable other information as is necessary to
to the United States Patent and Trade- process the charge, and is subject to
mark Office are required to be paid in collection of the fee. The Office will
advance; that is, at the time of re- not accept a general authorization to
questing any action by the Office for charge fees to a credit card. If credit
which a fee or charge is payable, with card information is provided on a form
the exception that under § 1.53 applica- or document other than a form pro-
tions for patent may be assigned a fil- vided by the Office for the payment of
ing date without payment of the basic fees by credit card, the Office will not
filing fee. be liable if the credit card number be-
(b) All fees paid to the United States comes public knowledge.
Patent and Trademark Office must be

itemized in each individual applica-
38
(c) A fee transmittal letter may be fees in an international design applica-

signed by a juristic applicant or patent tion set forth in § 1.1031 will only be ef-
owner. fective for the transmittal fee
[65 FR 33455, May 24, 2000, as amended at 69 (§ 1.1031(a)). An authorization to charge
FR 43752, July 22, 2004; 78 FR 62395, Oct. 21, fees under § 1.16 in an international ap-
2013] plication entering the national stage
under 35 U.S.C. 371 will be treated as an
§ 1.24 [Reserved] authorization to charge fees under
§ 1.25 Deposit accounts. § 1.492. An authorization to charge fees
set forth in § 1.18 to a deposit account
(a) For the convenience of attorneys, is subject to the provisions of § 1.311(b).
and the general public in paying any An authorization to charge to a deposit
fees due, in ordering services offered by account the fee for a request for reex-
the Office, copies of records, etc., de- amination pursuant to § 1.510 or 1.913
posit accounts may be established in and any other fees required in a reex-
the Patent and Trademark Office upon
amination proceeding in a patent may
payment of the fee for establishing a
also be filed with the request for reex-
deposit account (§ 1.21(b)(1)). A min-
amination, and an authorization to
imum deposit of $1,000 is required for
paying any fees due or in ordering any charge to a deposit account the fee for
services offered by the Office. However, a request for supplemental examina-
a minimum deposit of $300 may be paid tion pursuant to § 1.610 and any other
to establish a restricted subscription fees required in a supplemental exam-
deposit account used exclusively for ination proceeding in a patent may
subscription order of patent copies as also be filed with the request for sup-
issued. At the end of each month, a de- plemental examination. An authoriza-
posit account statement will be ren- tion to charge a fee to a deposit ac-
dered. A remittance must be made count will not be considered payment
promptly upon receipt of the statement of the fee on the date the authorization
to cover the value of items or services to charge the fee is effective unless suf-
charged to the account and thus re- ficient funds are present in the account
store the account to its established to cover the fee.
normal deposit. An amount sufficient (c) A deposit account holder may re-
to cover all fees, services, copies, etc., plenish the deposit account by submit-
requested must always be on deposit. ting a payment to the United States
Charges to accounts with insufficient Patent and Trademark Office. A pay-
funds will not be accepted. A service ment to replenish a deposit account
charge (§ 1.21(b)(2)) will be assessed for must be submitted by one of the meth-
each month that the balance at the end ods set forth in paragraphs (c)(1), (c)(2),
of the month is below $1,000. For re- (c)(3), or (c)(4) of this section.
stricted subscription deposit accounts, (1) A payment to replenish a deposit
a service charge (§ 1.21(b)(3)) will be as- account may be submitted by elec-
sessed for each month that the balance tronic funds transfer through the Fed-
at the end of the month is below $300. eral Reserve Fedwire System, which re-
(b) Filing, issue, appeal, inter-
quires that the following information
national-type search report, inter-
be provided to the deposit account
national application processing, inter-
holder’s bank or financial institution:
national design application fees, peti-
tion, and post-issuance fees may be (i) Name of the Bank, which is Treas
charged against these accounts if suffi- NYC (Treasury New York City);
cient funds are on deposit to cover such (ii) Bank Routing Code, which is
fees. A general authorization to charge 021030004;
all fees, or only certain fees, set forth (iii) United States Patent and Trade-
in §§ 1.16 through 1.18 to a deposit ac- mark Office account number with the
count containing sufficient funds may Department of the Treasury, which is
be filed in an individual application, ei- 13100001; and
ther for the entire pendency of the ap- (iv) The deposit account holder’s
plication or with a particular paper company name and deposit account

filed. A general authorization to charge number.
39
§ 1.26 37 CFR Ch. I (7–1–16 Edition)
(2) A payment to replenish a deposit time periods set forth in this paragraph
account may be submitted by elec- are not extendable.
tronic funds transfer over the Office’s (c) If the Director decides not to in-
Internet Web site (www.uspto.gov). stitute a reexamination proceeding in
(3) A payment to replenish a deposit response to a request for reexamina-
account may be addressed to: Director tion or supplemental examination, fees
of the United States Patent and Trade- paid with the request for reexamina-
mark Office, Attn: Deposit Accounts, tion or supplemental examination will
2051 Jamieson Avenue, Suite 300, Alex- be refunded or returned in accordance
andria, Virginia 22314. with paragraphs (c)(1) through (c)(3) of
(35 U.S.C. 6, Pub. L. 97–247) this section. The reexamination re-
quester or the patent owner who re-
[49 FR 553, Jan. 4, 1984, as amended at 50 FR
quested a supplemental examination
31826, Aug. 6, 1985; 65 FR 76772, Dec. 7, 2000; 67
FR 523, Jan. 4, 2002; 68 FR 14336, Mar. 25, 2003; proceeding, as appropriate, should indi-
69 FR 43752, July 22, 2004; 70 FR 56127, Sept. cate the form in which any refund
26, 2005; 73 FR 47541, Aug. 14, 2008; 78 FR 62395, should be made (e.g., by check, elec-
Oct. 21, 2013; 80 FR 17955, Apr. 2, 2015] tronic funds transfer, credit to a de-
posit account). Generally, refunds will
§ 1.26 Refunds. be issued in the form that the original
(a) The Director may refund any fee payment was provided.
paid by mistake or in excess of that re- (1) For an ex parte reexamination re-
quired. A change of purpose after the quest, the ex parte reexamination filing
payment of a fee, such as when a party fee paid by the reexamination re-
desires to withdraw a patent filing for quester, less the fee set forth in
which the fee was paid, including an § 1.20(c)(7), will be refunded to the re-
application, an appeal, or a request for quester if the Director decides not to
an oral hearing, will not entitle a party institute an ex parte reexamination
to a refund of such fee. The Office will proceeding.
not refund amounts of twenty-five dol-
(2) For an inter partes reexamination
lars or less unless a refund is specifi-
request, a refund of $7,970 will be made
cally requested, and will not notify the
payor of such amounts. If a party pay- to the reexamination requester if the
ing a fee or requesting a refund does Director decides not to institute an
not provide the banking information inter partes reexamination proceeding.
necessary for making refunds by elec- (3) For a supplemental examination
tronic funds transfer (31 U.S.C. 3332 and request, the fee for reexamination or-
31 CFR part 208), or instruct the Office dered as a result of supplemental ex-
that refunds are to be credited to a de- amination, as set forth in § 1.20(k)(2),
posit account, the Director may re- will be returned to the patent owner
quire such information, or use the who requested the supplemental exam-
banking information on the payment ination proceeding if the Director de-
instrument to make a refund. Any re- cides not to institute a reexamination
fund of a fee paid by credit card will be proceeding.
by a credit to the credit card account
to which the fee was charged. (35 U.S.C. 6; 15 U.S.C. 1113, 1123)
(b) Any request for refund must be [47 FR 41274, Sept. 17, 1982, as amended at 50
filed within two years from the date FR 31826, Aug. 6, 1985; 54 FR 6902, Feb. 15,
the fee was paid, except as otherwise 1989; 56 FR 65153, Dec. 13, 1991; 57 FR 38195,
provided in this paragraph or in Aug. 21, 1992; 62 FR 53183, Oct. 10, 1997; 65 FR
§ 1.28(a). If the Office charges a deposit 54659, Sept. 8, 2000; 65 FR 76773, Dec. 7, 2000;
account by an amount other than an 68 FR 48289, Aug. 13, 2003; 72 FR 46836, Aug.
21, 2007; 74 FR 52688, Oct. 14, 2009; 77 FR 48851,
amount specifically indicated in an au-
Aug. 14, 2012]
thorization (§ 1.25(b)), any request for
refund based upon such charge must be
filed within two years from the date of
the deposit account statement indi-
cating such charge, and include a copy

of that deposit account statement. The
40
§ 1.27 Definition of small entities and (i) Has not assigned, granted, con-
establishing status as a small entity veyed, or licensed, and is under no obli-
to permit payment of small entity gation under contract or law to assign,
fees; when a determination of enti- grant, convey, or license, any rights in
tlement to small entity status and the invention to any person, concern,
notification of loss of entitlement to
small entity status are required; or organization which would not qual-
fraud on the Office. ify as a person, small business concern,
or a nonprofit organization; and
(a) Definition of small entities. A small (ii) Is either:
entity as used in this chapter means (A) A university or other institution
any party (person, small business con-
of higher education located in any
cern, or nonprofit organization) under
country;
paragraphs (a)(1) through (a)(3) of this
(B) An organization of the type de-
section.
scribed in section 501(c)(3) of the Inter-
(1) Person. A person, as used in para-
nal Revenue Code of 1986 (26 U.S.C.
graph (c) of this section, means any in-
501(c)(3)) and exempt from taxation
ventor or other individual (e.g., an in-
under section 501(a) of the Internal
dividual to whom an inventor has
Revenue Code (26 U.S.C. 501(a));
transferred some rights in the inven-
tion) who has not assigned, granted, (C) Any nonprofit scientific or edu-
conveyed, or licensed, and is under no cational organization qualified under a
obligation under contract or law to as- nonprofit organization statute of a
sign, grant, convey, or license, any state of this country (35 U.S.C. 201(i));
rights in the invention. An inventor or or
other individual who has transferred (D) Any nonprofit organization lo-
some rights in the invention to one or cated in a foreign country which would
more parties, or is under an obligation qualify as a nonprofit organization
to transfer some rights in the inven- under paragraphs (a)(3)(ii)(B) of this
tion to one or more parties, can also section or (a)(3)(ii)(C) of this section if
qualify for small entity status if all the it were located in this country.
parties who have had rights in the in- (4) License to a Federal agency. (i) For
vention transferred to them also qual- persons under paragraph (a)(1) of this
ify for small entity status either as a section, a license to the Government
person, small business concern, or non- resulting from a rights determination
profit organization under this section. under Executive Order 10096 does not
(2) Small business concern. A small constitute a license so as to prohibit
business concern, as used in paragraph claiming small entity status.
(c) of this section, means any business (ii) For small business concerns and
concern that: nonprofit organizations under para-
(i) Has not assigned, granted, con- graphs (a)(2) and (a)(3) of this section, a
veyed, or licensed, and is under no obli- license to a Federal agency resulting
gation under contract or law to assign, from a funding agreement with that
grant, convey, or license, any rights in agency pursuant to 35 U.S.C. 202(c)(4)
the invention to any person, concern, does not constitute a license for the
or organization which would not qual- purposes of paragraphs (a)(2)(i) and
ify for small entity status as a person, (a)(3)(i) of this section.
small business concern, or nonprofit (5) Security Interest. A security inter-
organization; and est does not involve an obligation to
(ii) Meets the size standards set forth transfer rights in the invention for the
in 13 CFR 121.801 through 121.805 to be purposes of paragraphs (a)(1) through
eligible for reduced patent fees. Ques- (a)(3) of this section unless the security
tions related to standards for a small interest is defaulted upon.
business concern may be directed to: (b) Establishment of small entity status
Small Business Administration, Size permits payment of reduced fees. (1) A
Standards Staff, 409 Third Street, SW., small entity, as defined in paragraph
Washington, DC 20416. (a) of this section, who has properly as-
(3) Nonprofit Organization. A non- serted entitlement to small entity sta-
profit organization, as used in para- tus pursuant to paragraph (c) of this
graph (c) of this section, means any section will be accorded small entity
nonprofit organization that: status by the Office in the particular
41
§ 1.27 37 CFR Ch. I (7–1–16 Edition)
application or patent in which entitle- (3) Assertion by payment of the small

ment to small entity status was as- entity basic filing, basic transmittal, basic
serted. Establishment of small entity national fee, international search fee, or
status allows the payment of certain individual designation fee in an inter-
reduced patent fees pursuant to 35 national design application. The pay-
U.S.C. 41(h)(1). ment, by any party, of the exact
(2) Submission of an original utility amount of one of the small entity basic
application in compliance with the Of- filing fees set forth in § 1.16(a), (b), (c),
fice electronic filing system by an ap- (d), or (e), the small entity transmittal
plicant who has properly asserted enti- fee set forth in § 1.445(a)(1), the small
tlement to small entity status pursu- entity international search fee set
ant to paragraph (c) of this section in forth in § 1.445(a)(2) to a Receiving Of-
that application allows the payment of fice other than the United States Re-
a reduced filing fee pursuant to 35 ceiving Office in the exact amount es-
U.S.C. 41(h)(3). tablished for that Receiving Office pur-
(c) Assertion of small entity status. Any suant to PCT Rule 16, or the small en-
party (person, small business concern tity basic national fee set forth in
or nonprofit organization) should make § 1.492(a), will be treated as a written
a determination, pursuant to para- assertion of entitlement to small enti-
graph (f) of this section, of entitlement ty status even if the type of basic fil-
to be accorded small entity status ing, basic transmittal, or basic na-
based on the definitions set forth in tional fee is inadvertently selected in
paragraph (a) of this section, and must, error. The payment, by any party, of
in order to establish small entity sta- the small entity first part of the indi-
tus for the purpose of paying small en- vidual designation fee for the United
tity fees, actually make an assertion of States to the International Bureau
entitlement to small entity status, in (§ 1.1031) will be treated as a written as-
the manner set forth in paragraphs sertion of entitlement to small entity
(c)(1) or (c)(3) of this section, in the ap- status.
plication or patent in which such small
(i) If the Office accords small entity
entity fees are to be paid.
status based on payment of a small en-
(1) Assertion by writing. Small entity
tity basic filing or basic national fee
status may be established by a written
assertion of entitlement to small enti- under paragraph (c)(3) of this section
ty status. A written assertion must: that is not applicable to that applica-
(i) Be clearly identifiable; tion, any balance of the small entity
(ii) Be signed (see paragraph (c)(2) of fee that is applicable to that applica-
this section); and tion will be due along with the appro-
(iii) Convey the concept of entitle- priate surcharge set forth in § 1.16(f), or
ment to small entity status, such as by § 1.16(g).
stating that applicant is a small enti- (ii) The payment of any small entity
ty, or that small entity status is enti- fee other than those set forth in para-
tled to be asserted for the application graph (c)(3) of this section (whether in
or patent. While no specific words or the exact fee amount or not) will not
wording are required to assert small be treated as a written assertion of en-
entity status, the intent to assert titlement to small entity status and
small entity status must be clearly in- will not be sufficient to establish small
dicated in order to comply with the as- entity status in an application or a
sertion requirement. patent.
(2) Parties who can sign the written as- (4) Assertion required in related, con-
sertion. The written assertion can be tinuing, and reissue applications. Status
signed by: as a small entity must be specifically
(i) The applicant (§ 1.42 or § 1.421); established by an assertion in each re-
(ii) A patent practitioner of record or lated, continuing and reissue applica-
a practitioner acting in a representation in which status is appropriate and
tive capacity under § 1.34; desired. Status as a small entity in one
(iii) The inventor or a joint inventor, application or patent does not affect
if the inventor is the applicant; or the status of any other application or

(iv) The assignee. patent, regardless of the relationship of
42
the applications or patents. The re- as a small entity may thereafter be

filing of an application under § 1.53 as a paid in that application or patent with-
continuation, divisional, or continu- out regard to a change in status until
ation-in-part application (including a the issue fee is due or any maintenance
continued prosecution application fee is due.
under § 1.53(d)), or the filing of a reissue (2) Notification of loss of entitlement to
application, requires a new assertion as small entity status is required when issue
to continued entitlement to small enti- and maintenance fees are due. Notifica-
ty status for the continuing or reissue tion of a loss of entitlement to small
application. entity status must be filed in the appli-
(d) When small entity fees can be paid. cation or patent prior to paying, or at
Any fee, other than the small entity the time of paying, the earliest of the
basic filing fees and the small entity issue fee or any maintenance fee due
national fees of paragraph (c)(3) of this after the date on which status as a
section, can be paid in the small entity small entity as defined in paragraph (a)
amount only if it is submitted with, or of this section is no longer appropriate.
subsequent to, the submission of a The notification that small entity sta-
written assertion of entitlement to tus is no longer appropriate must be
small entity status, except when resigned by a party identified in § 1.33(b).
funds are permitted by § 1.28(a). Payment of a fee in other than the
(e) Only one assertion required. (1) An small entity amount is not sufficient
assertion of small entity status need notification that small entity status is
only be filed once in an application or no longer appropriate.
patent. Small entity status, once es- (h) Fraud attempted or practiced on the
tablished, remains in effect until Office. (1) Any attempt to fraudulently
changed pursuant to paragraph (g)(1) of establish status as a small entity, or
this section. Where an assignment of pay fees as a small entity, shall be con-
rights or an obligation to assign rights
sidered as a fraud practiced or at-
to other parties who are small entities
tempted on the Office.
occurs subsequent to an assertion of
(2) Improperly, and with intent to de-
small entity status, a second assertion
is not required. ceive, establishing status as a small en-
(2) Once small entity status is with- tity, or paying fees as a small entity,
drawn pursuant to paragraph (g)(2) of shall be considered as a fraud practiced
this section, a new written assertion is or attempted on the Office.
required to again obtain small entity [65 FR 54659, Sept. 8, 2000, as amended at 69
status. FR 56538, Sept. 21, 2004; 70 FR 3889, Jan. 27,
(f) Assertion requires a determination of 2005; 77 FR 48813, Aug. 14, 2012; 78 FR 4289,
entitlement to pay small entity fees. Prior Jan. 18, 2013; 80 FR 17955, Apr. 2, 2015]
to submitting an assertion of entitle-
ment to small entity status in an ap- § 1.28 Refunds when small entity sta-
plication, including a related, con- tus is later established; how errors
in small entity status are excused.
tinuing, or reissue application, a deter-
mination of such entitlement should be (a) Refunds based on later establish-
made pursuant to the requirements of ment of small entity status. A refund pur-
paragraph (a) of this section. It should suant to § 1.26, based on establishment
be determined that all parties holding of small entity status, of a portion of
rights in the invention qualify for fees timely paid in full prior to estab-
small entity status. The Office will lishing status as a small entity may
generally not question any assertion of only be obtained if an assertion under
small entity status that is made in ac- § 1.27(c) and a request for a refund of
cordance with the requirements of this the excess amount are filed within
section, but note paragraph (h) of this three months of the date of the timely
section. payment of the full fee. The three-
(g)(1) New determination of entitlement month time period is not extendable
to small entity status is needed when issue under § 1.136. Status as a small entity is
and maintenance fees are due. Once sta- waived for any fee by the failure to es-
tus as a small entity has been estab- tablish the status prior to paying, at
lished in an application or patent, fees the time of paying, or within three
43
§ 1.29 37 CFR Ch. I (7–1–16 Edition)
months of the date of payment of, the paid in error and the time the defi-
full fee. ciency is paid in full, the deficiency
(b) Date of payment. (1) The three- owed is equal to the amount (pre-
month period for requesting a refund, viously) paid in error;
pursuant to paragraph (a) of this sec- (ii) Itemization of the deficiency pay-
tion, starts on the date that a full fee ment. An itemization of the total defi-
has been paid; ciency payment is required. The
(2) The date when a deficiency pay- itemization must include the following
ment is paid in full determines the information:
amount of deficiency that is due, pur- (A) Each particular type of fee that
suant to paragraph (c) of this section. was erroneously paid as a small entity,
(c) How errors in small entity status are (e.g., basic statutory filing fee, two-
excused. If status as a small entity is month extension of time fee) along
established in good faith, and fees as a with the current fee amount for a non-
small entity are paid in good faith, in small entity;
any application or patent, and it is (B) The small entity fee actually
later discovered that such status as a paid, and when. This will permit the
small entity was established in error, Office to differentiate, for example, be-
or that through error the Office was tween two one-month extension of time
not notified of a loss of entitlement to fees erroneously paid as a small entity
small entity status as required by but on different dates;
§ 1.27(g)(2), the error will be excused (C) The deficiency owed amount (for
upon: compliance with the separate each fee erroneously paid); and
submission and itemization require- (D) The total deficiency payment
ments of paragraphs (c)(1) and (c)(2) of owed, which is the sum or total of the
this section, and the deficiency pay- individual deficiency owed amounts set
ment requirement of paragraph (c)(2) of forth in paragraph (c)(2)(ii)(C) of this
this section: section.
(1) Separate submission required for (3) Failure to comply with requirements.
each application or patent. Any paper If the requirements of paragraphs (c)(1)
submitted under this paragraph must and (c)(2) of this section are not com-
be limited to the deficiency payment plied with, such failure will either: be
(all fees paid in error), required by treated as an authorization for the Of-
paragraph (c)(2) of this section, for one fice to process the deficiency payment
application or one patent. Where more and charge the processing fee set forth
than one application or patent is in- in § 1.17(i), or result in a requirement
volved, separate submissions of defi- for compliance within a one-month
ciency payments (e.g., checks) and non-extendable time period under
itemizations are required for each ap- § 1.136(a) to avoid the return of the fee
plication or patent. See § 1.4(b). deficiency paper, at the option of the
(2) Payment of deficiency owed. The de- Office.
(d) Payment of deficiency operates as
ficiency owed, resulting from the pre-
notification of loss of status. Any defi-
vious erroneous payment of small enti-
ciency payment (based on a previous
ty fees, must be paid.
erroneous payment of a small entity
(i) Calculation of the deficiency owed.
fee) submitted under paragraph (c) of
The deficiency owed for each previous
this section will be treated under
fee erroneously paid as a small entity
§ 1.27(g)(2) as a notification of a loss of
is the difference between the current
entitlement to small entity status.
fee amount (for other than a small en-
tity) on the date the deficiency is paid [65 FR 54661, Sept. 8, 2000]
in full and the amount of the previous
erroneous (small entity) fee payment. § 1.29 Micro entity status.
The total deficiency payment owed is (a) To establish micro entity status
the sum of the individual deficiency under this paragraph, the applicant
owed amounts for each fee amount pre- must certify that:
viously erroneously paid as a small en- (1) The applicant qualifies as a small
tity. Where a fee paid in error as a entity as defined in § 1.27;
small entity was subject to a fee de- (2) Neither the applicant nor the in-
crease between the time the fee was ventor nor a joint inventor has been
44
named as the inventor or a joint inven- (d) To establish micro entity status
tor on more than four previously filed under this paragraph, the applicant
patent applications, other than appli- must certify that:
cations filed in another country, provi- (1) The applicant qualifies as a small
sional applications under 35 U.S.C. entity as defined in § 1.27; and
111(b), or international applications for (2)(i) The applicant’s employer, from
which the basic national fee under 35 which the applicant obtains the major-
U.S.C. 41(a) was not paid; ity of the applicant’s income, is an in-
(3) Neither the applicant nor the institution of higher education as defined
ventor nor a joint inventor, in the cal- in section 101(a) of the Higher Edu-
endar year preceding the calendar year cation Act of 1965 (20 U.S.C. 1001(a)); or
in which the applicable fee is being (ii) The applicant has assigned,
paid, had a gross income, as defined in granted, conveyed, or is under an obli-
section 61(a) of the Internal Revenue gation by contract or law, to assign,
Code of 1986 (26 U.S.C. 61(a)), exceeding grant, or convey, a license or other
three times the median household in- ownership interest in the particular ap-
come for that preceding calendar year, plication to such an institution of
as most recently reported by the Bu- higher education.
reau of the Census; and (e) Micro entity status is established
(4) Neither the applicant nor the in- in an application by filing a micro en-
ventor nor a joint inventor has as- tity certification in writing complying
signed, granted, or conveyed, nor is with the requirements of either para-
graph (a) or (d) of this section and
under an obligation by contract or law
signed either in compliance with
to assign, grant, or convey, a license or
§ 1.33(b), in an international application
other ownership interest in the appli-
filed in a Receiving Office other than
cation concerned to an entity that, in
the United States Receiving Office by a
the calendar year preceding the cal-
person authorized to represent the ap-
endar year in which the applicable fee
plicant under § 1.455, or in an inter-
is being paid, had a gross income, as
national design application by a person
defined in section 61(a) of the Internal
authorized to represent the applicant
Revenue Code of 1986, exceeding three
under § 1.1041 before the International
times the median household income for
Bureau where the micro entity certifi-
that preceding calendar year, as most cation is filed with the International
recently reported by the Bureau of the Bureau. Status as a micro entity must
Census. be specifically established in each re-
(b) An applicant, inventor, or joint lated, continuing and reissue applica-
inventor is not considered to be named tion in which status is appropriate and
on a previously filed application for desired. Status as a micro entity in one
purposes of paragraph (a)(2) of this sec- application or patent does not affect
tion if the applicant, inventor, or joint the status of any other application or
inventor has assigned, or is under an patent, regardless of the relationship of
obligation by contract or law to assign, the applications or patents. The re-
all ownership rights in the application filing of an application under § 1.53 as a
as the result of the applicant’s, inven- continuation, divisional, or continu-
tor’s, or joint inventor’s previous em- ation-in-part application (including a
ployment. continued prosecution application
(c) If an applicant’s, inventor’s, joint under § 1.53(d)), or the filing of a reissue
inventor’s, or entity’s gross income in application, requires a new certifi-
the preceding calendar year is not in cation of entitlement to micro entity
United States dollars, the average cur- status for the continuing or reissue ap-
rency exchange rate, as reported by the plication.
Internal Revenue Service, during that (f) A fee may be paid in the micro en-
calendar year shall be used to deter- tity amount only if it is submitted
mine whether the applicant’s, inven- with, or subsequent to, the submission
tor’s, joint inventor’s, or entity’s gross of a certification of entitlement to
income exceeds the threshold specified micro entity status.
in paragraph (a)(3) or (4) of this sec- (g) A certification of entitlement to

tion. micro entity status need only be filed
45
§ 1.29 37 CFR Ch. I (7–1–16 Edition)
once in an application or patent. Micro (j) Any attempt to fraudulently es-

entity status, once established, re- tablish status as a micro entity, or pay
mains in effect until changed pursuant fees as a micro entity, shall be consid-
to paragraph (i) of this section. How- ered as a fraud practiced or attempted
ever, a fee may be paid in the micro en- on the Office. Improperly, and with in-
tity amount only if status as a micro tent to deceive, establishing status as a
entity as defined in paragraph (a) or (d) micro entity, or paying fees as a micro
of this section is appropriate on the entity, shall be considered as a fraud
date the fee is being paid. Where an as- practiced or attempted on the Office.
signment of rights or an obligation to (k) If status as a micro entity is es-
assign rights to other parties who are tablished in good faith in an applica-
micro entities occurs subsequent to the tion or patent, and fees as a micro enti-
filing of a certification of entitlement ty are paid in good faith in the applica-
to micro entity status, a second certifi- tion or patent, and it is later discov-
cation of entitlement to micro entity ered that such micro entity status ei-
status is not required. ther was established in error, or that
(h) Prior to submitting a certifi- the Office was not notified of a loss of
cation of entitlement to micro entity entitlement to micro entity status as
status in an application, including a re- required by paragraph (i) of this sec-
lated, continuing, or reissue application through error, the error will be ex-
tion, a determination of such entitle- cused upon compliance with the sepa-
ment should be made pursuant to the rate submission and itemization re-
requirements of this section. It should quirements of paragraph (k)(1) of this
be determined that each applicant section and the deficiency payment re-
qualifies for micro entity status under quirement of paragraph (k)(2) of this
paragraph (a) or (d) of this section, and section.
that any other party holding rights in (1) Any paper submitted under this
the invention qualifies for small entity paragraph must be limited to the defi-
status under § 1.27. The Office will gen- ciency payment (all fees paid in error)
erally not question certification of en- required for a single application or pat-
titlement to micro entity status that ent. Where more than one application
is made in accordance with the require- or patent is involved, separate submis-
ments of this section. sions of deficiency payments are re-
(i) Notification of a loss of entitle- quired for each application or patent
ment to micro entity status must be (see § 1.4(b)). The paper must contain an
filed in the application or patent prior itemization of the total deficiency pay-
to paying, or at the time of paying, any ment for the single application or pat-
fee after the date on which status as a ent and include the following informa-
micro entity as defined in paragraph tion:
(a) or (d) of this section is no longer ap- (i) Each particular type of fee that
propriate. The notification that micro was erroneously paid as a micro entity,
entity status is no longer appropriate (e.g., basic statutory filing fee, two-
must be signed by a party identified in month extension of time fee) along
§ 1.33(b). Payment of a fee in other than with the current fee amount for a
the micro entity amount is not suffi- small or non-small entity, as applica-
cient notification that micro entity ble;
status is no longer appropriate. A noti- (ii) The micro entity fee actually
fication that micro entity status is no paid, and the date on which it was paid;
longer appropriate will not be treated (iii) The deficiency owed amount (for
as a notification that small entity sta- each fee erroneously paid); and
tus is also no longer appropriate unless (iv) The total deficiency payment
it also contains a notification of loss of owed, which is the sum or total of the
entitlement to small entity status individual deficiency owed amounts as
under § 1.27(f)(2). Once a notification of set forth in paragraph (k)(2) of this sec-
a loss of entitlement to micro entity tion.
status is filed in the application or pat- (2) The deficiency owed, resulting
ent, a new certification of entitlement from the previous erroneous payment
to micro entity status is required to of micro entity fees, must be paid. The
again obtain micro entity status. deficiency owed for each previous fee
46
erroneously paid as a micro entity is § 1.32 Power of attorney.

the difference between the current fee
(a) Definitions. (1) Patent practitioner
amount for a small entity or non-small means a registered patent attorney or
entity, as applicable, on the date the registered patent agent under § 11.6.
deficiency is paid in full and the (2) Power of attorney means a written
amount of the previous erroneous document by which a principal author-
micro entity fee payment. The total izes one or more patent practitioners
deficiency payment owed is the sum of or joint inventors to act on the prin-
the individual deficiency owed cipal’s behalf.
amounts for each fee amount pre- (3) Principal means the applicant
viously and erroneously paid as a (§ 1.42) for an application for patent and
micro entity. the patent owner for a patent, includ-
(3) If the requirements of paragraphs ing a patent in a supplemental exam-
(k)(1) and (2) of this section are not ination or reexamination proceeding.
complied with, such failure will either The principal executes a power of at-
be treated at the option of the Office as torney designating one or more patent
an authorization for the Office to proc- practitioners or joint inventors to act
ess the deficiency payment and charge on the principal’s behalf.
the processing fee set forth in § 1.17(i), (4) Revocation means the cancellation
or result in a requirement for compli- by the principal of the authority pre-
ance within a one-month time period viously given to a patent practitioner
that is not extendable under § 1.136(a) or joint inventor to act on the prin-
to avoid the return of the fee defi- cipal’s behalf.
ciency payment. (5) Customer Number means a number
(4) Any deficiency payment (based on that may be used to:
a previous erroneous payment of a (i) Designate the correspondence ad-
micro entity fee) submitted under this dress of a patent application or patent
paragraph will be treated as a notifica- such that the correspondence address
for the patent application, patent or
tion of a loss of entitlement to micro
other patent proceeding would be the
entity status under paragraph (i) of
address associated with the Customer
this section.
Number;
[77 FR 75033, Dec. 19, 2012, as amended at 78 (ii) Designate the fee address (§ 1.363)
FR 62396, Oct. 21, 2013; 80 FR 17955, Apr. 2, of a patent such that the fee address
2015] for the patent would be the address as-
sociated with the Customer Number;
Subpart B—National Processing and
Provisions (iii) Submit a list of patent practi-
tioners such that those patent practi-
PROSECUTION OF APPLICATION AND tioners associated with the Customer
APPOINTMENT OF ATTORNEY OR AGENT Number would have power of attorney.
(6) Patent practitioner of record means
§ 1.31 Applicant may be represented a patent practitioner who has been
by one or more patent practitioners granted a power of attorney in an ap-
or joint inventors. plication, patent, or other proceeding
An applicant for patent may file and in compliance with paragraph (b) of
prosecute the applicant’s own case, or this section. The phrases practitioner
the applicant may give power of attor- of record and attorney or agent of
ney so as to be represented by one or record also mean a patent practitioner
more patent practitioners or joint in- who has been granted a power of attor-
ventors, except that a juristic entity ney in an application, patent, or other
proceeding in compliance with para-
(e.g., organizational assignee) must be
graph (b) of this section.
represented by a patent practitioner
(b) A power of attorney must:
even if the juristic entity is the appli-
(1) Be in writing;
cant. The Office cannot aid in the se-
(2) Name one or more representatives
lection of a patent practitioner.

in compliance with paragraph (c) of
[77 FR 48813, Aug. 14, 2012] this section;
47
§ 1.33 37 CFR Ch. I (7–1–16 Edition)
(3) Give the representative power to preclude a practitioner from acting

act on behalf of the principal; and pursuant to § 1.34, if applicable.
(4) Be signed by the applicant for pat- [69 FR 29877, May 26, 2004, as amended at 70
ent (§ 1.42) or the patent owner. A pat- FR 56127, Sept. 26, 2005; 77 FR 48813, Aug. 14,
ent owner who was not the applicant 2012; 80 FR 17956, Apr. 2, 2015]
under § 1.46 must appoint any power of
attorney in compliance with §§ 3.71 and § 1.33 Correspondence respecting pat-
ent applications, patent reexamina-
3.73 of this chapter. tion proceedings, and other pro-
(c) A power of attorney may only ceedings.
name as representative:
(a) Correspondence address and daytime
(1) One or more joint inventors telephone number. When filing an appli-
(§ 1.45); cation, a correspondence address must
(2) Those registered patent practi- be set forth in either an application
tioners associated with a Customer data sheet (§ 1.76), or elsewhere, in a
Number; clearly identifiable manner, in any
(3) Ten or fewer patent practitioners, paper submitted with an application
stating the name and registration filing. If no correspondence address is
number of each patent practitioner. specified, the Office may treat the
Except as provided in paragraph (c)(1) mailing address of the first named in-
or (c)(2) of this section, the Office will ventor (if provided, see §§ 1.76(b)(1) and
not recognize more than ten patent 1.63(b)(2)) as the correspondence ad-
practitioners as being of record in an dress. The Office will direct, or other-
application or patent. If a power of at- wise make available, all notices, offi-
torney names more than ten patent cial letters, and other communications
practitioners, such power of attorney relating to the application to the per-
must be accompanied by a separate son associated with the correspondence
paper indicating which ten patent prac- address. For correspondence submitted
titioners named in the power of attor- via the Office’s electronic filing sys-
tem, however, an electronic acknowl-
ney are to be recognized by the Office
edgment receipt will be sent to the sub-
as being of record in the application or
mitter. The Office will generally not
patent to which the power of attorney engage in double correspondence with
is directed. an applicant and a patent practitioner,
(d) A power of attorney from a prior or with more than one patent practi-
national application for which benefit tioner except as deemed necessary by
is claimed under 35 U.S.C. 120, 121, the Director. If more than one cor-
365(c), or 386(c) in a continuing applica- respondence address is specified, the
tion may have effect in the continuing Office will select one of the specified
application if a copy of the power of at- addresses for use as the correspondence
torney from the prior application is address and, if given, may select the
filed in the continuing application un- address associated with a Customer
less: Number over a typed correspondence
(1) The power of attorney was grant- address. For the party to whom cor-
ed by the inventor; and respondence is to be addressed, a day-
(2) The continuing application names time telephone number should be sup-
an inventor who was not named as an plied in a clearly identifiable manner
inventor in the prior application. and may be changed by any party who
(e) If the power of attorney was may change the correspondence ad-
dress. The correspondence address may
granted by the originally named inven-
be changed by the parties set forth in
tive entity, and an added inventor pur-
paragraph (b)(1) or (b)(3) of this sec-
suant to § 1.48 does not provide a power tion. Prior to the appointment of any
of attorney consistent with the power power of attorney under § 1.32(b), the
of attorney granted by the originally correspondence address may also be
named inventive entity, the addition of changed by any patent practitioner
the inventor results in the loss of that named in the application transmittal
power of attorney upon grant of the papers who acts in a representative ca-
§ 1.48 request. This provision does not pacity under the provisions of § 1.34.
48
(b) Amendments and other papers. wise, the Office may not recognize the
Amendments and other papers, except change of correspondence address ef-
for written assertions pursuant to fected during the prosecution of the
§ 1.27(c)(2)(iii) or (c)(2)(iv), filed in the prior application.
application must be signed by: (g) A patent practitioner acting in a
(1) A patent practitioner of record; representative capacity whose cor-
(2) A patent practitioner not of respondence address is the correspond-
record who acts in a representative ca- ence address of record in an application
pacity under the provisions of § 1.34; or may change the correspondence ad-
(3) The applicant (§ 1.42). Unless oth- dress after the patent has issued, pro-
erwise specified, all papers submitted vided that the change of correspond-
on behalf of a juristic entity must be ence address is accompanied by a state-
signed by a patent practitioner. ment that notice has been given to the
(c) All notices, official letters, and patentee or owner.
other communications for the patent
owner or owners in a reexamination or [36 FR 12617, July 2, 1971, as amended at 46
supplemental examination proceeding FR 29181, May 29, 1981; 49 FR 34724, Aug. 31,
1984; 50 FR 5171, Feb. 6, 1985; 62 FR 53184, Oct.
will be directed to the correspondence
10, 1997; 65 FR 54661, Sept. 8, 2000; 69 FR 29877,
address in the patent file. Amendments May 26, 2004; 69 FR 35452, June 24, 2004; 70 FR
filed in a reexamination proceeding, 3889, Jan. 27, 2005; 70 FR 56127, Sept. 26, 2005;
and other papers filed in a reexamina- 72 FR 2776, Jan. 23, 2007; 72 FR 18904, Apr. 16,
tion or supplemental examination pro- 2007; 77 FR 48814, Aug. 14, 2012; 78 FR 62396,
ceeding, on behalf of the patent owner Oct. 21, 2013]
must be signed by the patent owner, or
if there is more than one owner by all § 1.34 Acting in a representative ca-
the owners, or by an attorney or agent pacity.
of record in the patent file, or by a reg- When a patent practitioner acting in
istered attorney or agent not of record a representative capacity appears in
who acts in a representative capacity person or signs a paper in practice be-
under the provisions of § 1.34. Double fore the United States Patent and
correspondence with the patent owner Trademark Office in a patent case, his
or owners and the patent owner’s attor- or her personal appearance or signa-
ney or agent, or with more than one at- ture shall constitute a representation
torney or agent, will not be under- to the United States Patent and Trade-
taken. mark Office that under the provisions
(d) A ‘‘correspondence address’’ or of this subchapter and the law, he or
change thereto may be filed with the she is authorized to represent the par-
Patent and Trademark Office during ticular party on whose behalf he or she
the enforceable life of the patent. The acts. In filing such a paper, the patent
‘‘correspondence address’’ will be used practitioner must set forth his or her
in any correspondence relating to registration number, his or her name
maintenance fees unless a separate and signature. Further proof of author-
‘‘fee address’’ has been specified. See ity to act in a representative capacity
§ 1.363 for ‘‘fee address’’ used solely for may be required.
maintenance fee purposes.
(e) A change of address filed in a pat- [70 FR 56127, Sept. 26, 2005]
ent application or patent does not
change the address for a patent practi- § 1.36 Revocation of power of attorney;
tioner in the roster of patent attorneys withdrawal of patent attorney or
agent.
and agents. See § 11.11 of this title.
(f) Where application papers from a (a) A power of attorney, pursuant to
prior application are used in a con- § 1.32(b), may be revoked at any stage
tinuing application and the correspond- in the proceedings of a case by the ap-
ence address was changed during the plicant or patent owner. A power of at-
prosecution of the prior application, an torney to the patent practitioners as-
application data sheet or separate sociated with a Customer Number will
paper identifying the correspondence be treated as a request to revoke any
address to be used for the continuing powers of attorney previously given.

application must be submitted. Other- Fewer than all of the applicants (or
49
§ 1.41 37 CFR Ch. I (7–1–16 Edition)
fewer than all patent owners in a sup- inventor for any invention claimed in
plemental examination or reexamina- the application.
tion proceeding) may revoke the power (b) The inventorship of a nonprovi-
of attorney only upon a showing of suf- sional application under 35 U.S.C.
ficient cause, and payment of the peti- 111(a) is the inventor or joint inventors
tion fee set forth in § 1.17(f). A patent set forth in the application data sheet
practitioner will be notified of the rev- in accordance with § 1.76 filed before or
ocation of the power of attorney. concurrently with the inventor’s oath
Where power of attorney is given to the or declaration. If an application data
patent practitioners associated with a sheet is not filed before or concur-
Customer Number (§ 1.32(c)(2)), the rently with the inventor’s oath or dec-
practitioners so appointed will also be laration, the inventorship is the inven-
notified of the revocation of the power tor or joint inventors set forth in the
of attorney when the power of attorney inventor’s oath or declaration, except
to all of the practitioners associated as provided for in §§ 1.53(d)(4) and
with the Customer Number is revoked. 1.63(d). Once an application data sheet
The notice of revocation will be mailed or the inventor’s oath or declaration is
to the correspondence address for the filed in a nonprovisional application,
application (§ 1.33) in effect before the any correction of inventorship must be
revocation. An assignment will not of pursuant to § 1.48. If neither an applica-
itself operate as a revocation of a tion data sheet nor the inventor’s oath
power previously given, but the as- or declaration is filed during the pend-
signee may become the applicant under ency of a nonprovisional application,
§ 1.46(c) and revoke any previous power the inventorship is the inventor or
of attorney and grant a power of attor- joint inventors set forth in the applica-
ney as provided in § 1.32(b). tion papers filed pursuant to § 1.53(b),
(b) A registered patent attorney or unless the applicant files a paper, in-
patent agent who has been given a cluding the processing fee set forth in
power of attorney pursuant to § 1.32(b) § 1.17(i), supplying the name or names
may withdraw as attorney or agent of of the inventor or joint inventors.
record upon application to and ap- (c) The inventorship of a provisional
proval by the Director. The applicant application is the inventor or joint in-
or patent owner will be notified of the ventors set forth in the cover sheet as
withdrawal of the registered patent at- prescribed by § 1.51(c)(1). Once a cover
torney or patent agent. Where power of sheet as prescribed by § 1.51(c)(1) is filed
attorney is given to the patent practi- in a provisional application, any cor-
tioners associated with a Customer rection of inventorship must be pursu-
Number, a request to delete all of the ant to § 1.48. If a cover sheet as pre-
patent practitioners associated with scribed by § 1.51(c)(1) is not filed during
the Customer Number may not be the pendency of a provisional applica-
granted if an applicant has given power tion, the inventorship is the inventor
of attorney to the patent practitioners or joint inventors set forth in the ap-
associated with the Customer Number plication papers filed pursuant to
in an application that has an Office ac- § 1.53(c), unless applicant files a paper
tion to which a reply is due, but insuf- including the processing fee set forth
ficient time remains for the applicant in § 1.17(q), supplying the name or
to file a reply. See § 41.5 of this title for names of the inventor or joint inven-
withdrawal during proceedings before tors.
the Patent Trial and Appeal Board. (d) In a nonprovisional application
[69 FR 49997, Aug. 12, 2004, as amended at 70 under 35 U.S.C. 111(a) filed without an
FR 56128, Sept. 26, 2005; 77 FR 46624, Aug. 6, application data sheet or the inventor’s
2012; 77 FR 48814, Aug. 14, 2012] oath or declaration, or in a provisional
application filed without a cover sheet
WHO MAY APPLY FOR A PATENT as prescribed by § 1.51(c)(1), the name
and residence of each person believed
§ 1.41 Inventorship. to be an actual inventor should be pro-
(a) An application must include, or vided when the application papers pur-
be amended to include, the name of the suant to § 1.53(b) or § 1.53(c) are filed.
50
(e) The inventorship of an inter- (e) The Office may require additional
national application entering the na- information where there is a question
tional stage under 35 U.S.C. 371 is the concerning ownership or interest in an
inventor or joint inventors set forth in application, and a showing may be re-
the application data sheet in accord- quired from the person filing the appli-
ance with § 1.76 filed with the initial cation that the filing was authorized
submission under 35 U.S.C. 371. Unless where such authorization comes into
the initial submission under 35 U.S.C. question.
371 is accompanied by an application [77 FR 48815, Aug. 14, 2012]
data sheet in accordance with § 1.76 set-
ting forth the inventor or joint inven- § 1.43 Application for patent by a legal
tors, the inventorship is the inventor representative of a deceased or le-
or joint inventors set forth in the gally incapacitated inventor.
international application, which in- If an inventor is deceased or under
cludes any change effected under PCT legal incapacity, the legal representa-
Rule 92 bis. tive of the inventor may make an ap-
(f) The inventorship of an inter- plication for patent on behalf of the in-
national design application designating ventor. If an inventor dies during the
the United States is the creator or cre- time intervening between the filing of
ators set forth in the publication of the the application and the granting of a
international registration under Hague patent thereon, the letters patent may
Agreement Article 10(3). Any correc- be issued to the legal representative
tion of inventorship must be pursuant upon proper intervention. See § 1.64 con-
to § 1.48. cerning the execution of a substitute
[77 FR 48814, Aug. 14, 2012, as amended at 80 statement by a legal representative in
FR 17956, Apr. 2, 2015] lieu of an oath or declaration.
§ 1.42 Applicant for patent. [77 FR 48815, Aug. 14, 2012]
(a) The word ‘‘applicant’’ when used § 1.44 [Reserved]

in this title refers to the inventor or
all of the joint inventors, or to the per- § 1.45 Application for patent by joint
son applying for a patent as provided in inventors.
§§ 1.43, 1.45, or 1.46. (a) Joint inventors must apply for a
(b) If a person is applying for a pat- patent jointly, and each must make an
ent as provided in § 1.46, the word ‘‘ap- inventor’s oath or declaration as re-
plicant’’ refers to the assignee, the per- quired by § 1.63, except as provided for
son to whom the inventor is under an in § 1.64. If a joint inventor refuses to
obligation to assign the invention, or join in an application for patent or
the person who otherwise shows suffi- cannot be found or reached after dili-
cient proprietary interest in the mat- gent effort, the other joint inventor or
ter, who is applying for a patent under inventors may make the application
§ 1.46 and not the inventor. for patent on behalf of themselves and
(c) If fewer than all joint inventors the omitted inventor. See § 1.64 con-
are applying for a patent as provided in cerning the execution of a substitute
§ 1.45, the phrase ‘‘the applicant’’ statement by the other joint inventor
means the joint inventors who are ap- or inventors in lieu of an oath or dec-
plying for the patent without the omit- laration.
ted inventor(s). (b) Inventors may apply for a patent
(d) Any person having authority may jointly even though:
deliver an application and fees to the (1) They did not physically work to-
Office on behalf of the applicant. How- gether or at the same time;
ever, an oath or declaration, or sub- (2) Each inventor did not make the
stitute statement in lieu of an oath or same type or amount of contribution;
declaration, may be executed only in or
accordance with § 1.63 or 1.64, a cor- (3) Each inventor did not make a con-
respondence address may be provided tribution to the subject matter of
only in accordance with § 1.33(a), and every claim of the application.
amendments and other papers must be (c) If multiple inventors are named in
signed in accordance with § 1.33(b). a nonprovisional application, each
51
§ 1.46 37 CFR Ch. I (7–1–16 Edition)
named inventor must have made a con- (1) If the applicant is the assignee or
tribution, individually or jointly, to a person to whom the inventor is under
the subject matter of at least one an obligation to assign the invention,
claim of the application and the appli- documentary evidence of ownership
cation will be considered to be a joint (e.g., assignment for an assignee, em-
application under 35 U.S.C. 116. If mul- ployment agreement for a person to
tiple inventors are named in a provi- whom the inventor is under an obliga-
sional application, each named invention to assign the invention) should be
tor must have made a contribution, in- recorded as provided for in part 3 of
dividually or jointly, to the subject this chapter no later than the date the
matter disclosed in the provisional ap- issue fee is paid in the application.
plication and the provisional applica- (2) If the applicant is a person who
tion will be considered to be a joint ap- otherwise shows sufficient proprietary
plication under 35 U.S.C. 116. interest in the matter, such applicant
[77 FR 48815, Aug. 14, 2012] must submit a petition including:
(i) The fee set forth in § 1.17(g);
§ 1.46 Application for patent by an as- (ii) A showing that such person has
signee, obligated assignee, or a per- sufficient proprietary interest in the
son who otherwise shows sufficient matter; and
proprietary interest in the matter.
(iii) A statement that making the ap-
(a) A person to whom the inventor plication for patent by a person who
has assigned or is under an obligation otherwise shows sufficient proprietary
to assign the invention may make an interest in the matter on behalf of and
application for patent. A person who as agent for the inventor is appropriate
otherwise shows sufficient proprietary to preserve the rights of the parties.
interest in the matter may make an (c)(1) Correction or update in the name
application for patent on behalf of and of the applicant. Any request to correct
as agent for the inventor on proof of or update the name of the applicant
the pertinent facts and a showing that
under this section must include an ap-
such action is appropriate to preserve
plication data sheet under § 1.76 speci-
the rights of the parties.
fying the correct or updated name of
(b) If an application under 35 U.S.C. the applicant in the applicant informa-
111 is made by a person other than the
tion section (§ 1.76(b)(7)) in accordance
inventor under paragraph (a) of this
with § 1.76(c)(2). A change in the name
section, the application must contain
of the applicant recorded pursuant to
an application data sheet under § 1.76
Hague Agreement Article 16(1)(ii) will
specifying in the applicant information
be effective to change the name of the
section (§ 1.76(b)(7)) the assignee, person
applicant in a nonprovisional inter-
to whom the inventor is under an obli-
national design application.
gation to assign the invention, or per-
son who otherwise shows sufficient pro- (2) Change in the applicant. Any re-
prietary interest in the matter. If an quest to change the applicant under
application entering the national stage this section after an original applicant
under 35 U.S.C. 371, or a nonprovisional has been specified must include an ap-
international design application, is application data sheet under § 1.76 speci-
plied for by a person other than the in- fying the applicant in the applicant in-
ventor under paragraph (a) of this sec- formation section (§ 1.76(b)(7)) in ac-
tion, the assignee, person to whom the cordance with § 1.76(c)(2) and comply
inventor is under an obligation to as- with §§ 3.71 and 3.73 of this title.
sign the invention, or person who oth- (d) Even if the whole or a part inter-
erwise shows sufficient proprietary in- est in the invention or in the patent to
terest in the matter must have been be issued is assigned or obligated to be
identified as the applicant for the assigned, an oath or declaration must
United States in the international be executed by the actual inventor or
stage of the international application each actual joint inventor, except as
or as the applicant in the publication provided for in § 1.64. See § 1.64 con-
of the international registration under cerning the execution of a substitute

Hague Agreement Article 10(3). statement by an assignee, person to
52
whom the inventor is under an obliga- or change the inventorship is due sole-
tion to assign the invention, or a per- ly to the cancelation of claims in the
son who otherwise shows sufficient pro- application.
prietary interest in the matter. (d) Provisional application. Once a
(e) If a patent is granted on an appli- cover sheet as prescribed by § 1.51(c)(1)
cation filed under this section by a per- is filed in a provisional application,
son other than the inventor, the patent any request to correct or change the
shall be granted to the real party in in- inventorship must include:
terest. Otherwise, the patent may be (1) A request, signed by a party set
issued to the assignee or jointly to the forth in § 1.33(b), to correct the
inventor and the assignee as provided inventorship that identifies each inven-
in § 3.81. Where a real party in interest tor by his or her legal name; and
has filed an application under § 1.46, the (2) The processing fee set forth in
applicant shall notify the Office of any § 1.17(q).
change in the real party in interest no (e) Additional information may be re-
later than payment of the issue fee. quired. The Office may require such
The Office will treat the absence of other information as may be deemed
such a notice as an indication that appropriate under the particular cir-
there has been no change in the real cumstances surrounding the correction
party in interest. of inventorship.
(f) The Office may publish notice of (f) Correcting or updating the name of
the filing of the application by a person an inventor: Any request to correct or
who otherwise shows sufficient propri- update the name of the inventor or a
etary interest in the Official Gazette. joint inventor, or the order of the
names of joint inventors, in a non-
[77 FR 48815, Aug. 14, 2012, as amended at 80 provisional application must include:
FR 17956, Apr. 2, 2015] (1) An application data sheet in ac-
§ 1.47 [Reserved] cordance with § 1.76 that identifies each
inventor by his or her legal name in
§ 1.48 Correction of inventorship pur- the desired order; and
suant to 35 U.S.C. 116 or correction (2) The processing fee set forth in
of the name or order of names in a § 1.17(i).
patent application, other than a re- (g) Reissue applications not covered.
issue application. The provisions of this section do not
(a) Nonprovisional application: Any reapply to reissue applications. See
quest to correct or change the §§ 1.171 and 1.175 for correction of
inventorship once the inventorship has inventorship in a patent via a reissue
been established under § 1.41 must in- application.
clude: (h) Correction of inventorship in patent.
(1) An application data sheet in ac- See § 1.324 for correction of inventorship
cordance with § 1.76 that identifies each in a patent.
inventor by his or her legal name; and (i) Correction of inventorship in an in-
(2) The processing fee set forth in terference or contested case before the
§ 1.17(i). Patent Trial and Appeal Board. In an in-
(b) Inventor’s oath or declaration for terference under part 41, subpart D, of
added inventor: An oath or declaration this title, a request for correction of
as required by § 1.63, or a substitute inventorship in an application must be
statement in compliance with § 1.64, in the form of a motion under
will be required for any actual inventor § 41.121(a)(2) of this title. In a contested
who has not yet executed such an oath case under part 42, subpart D, of this
or declaration. title, a request for correction of
(c) Any request to correct or change inventorship in an application must be
the inventorship under paragraph (a) of in the form of a motion under § 42.22 of
this section filed after the Office action this title. The motion under
on the merits has been given or mailed § 41.121(a)(2) or 42.22 of this title must
in the application must also be accom- comply with the requirements of para-
panied by the fee set forth in § 1.17(d), graph (a) of this section.
unless the request is accompanied by a [77 FR 48816, Aug. 14, 2012, as amended at 78
statement that the request to correct FR 4289, Jan. 18, 2013]
53
§ 1.51 37 CFR Ch. I (7–1–16 Edition)
THE APPLICATION statement may be filed in a provisional

application.
§ 1.51 General requisites of an applica-
tion. [62 FR 53185, Oct. 10, 1997, as amended at 65
FR 54664, Sept. 8, 2000; 68 FR 14336, Mar. 25,
(a) Applications for patents must be 2003; 70 FR 3889, Jan. 27, 2005; 77 FR 46624,
made to the Director of the United Aug. 6, 2012; 77 FR 48816, Aug. 14, 2012; 78 FR
States Patent and Trademark Office. 62396, Oct. 21, 2013]
An application transmittal letter lim-
ited to the transmittal of the docu- § 1.52 Language, paper, writing, mar-
gins, compact disc specifications.
ments and fees comprising a patent ap-
plication under this section may be (a) Papers that are to become a part of
signed by a juristic applicant or patent the permanent United States Patent and
owner. Trademark Office records in the file of a
(b) A complete application filed patent application, or a reexamination or
under § 1.53(b) or § 1.53(d) comprises: supplemental examination proceeding. (1)
(1) A specification as prescribed by 35 All papers, other than drawings, that
U.S.C. 112, including a claim or claims, are submitted on paper or by facsimile
see §§ 1.71 to 1.77; transmission, and are to become a part
(2) The inventor’s oath or declara- of the permanent United States Patent
tion, see §§ 1.63 and 1.64; and Trademark Office records in the
(3) Drawings, when necessary, see file of a patent application or reexam-
§§ 1.81 to 1.85; and ination or supplemental examination
(4) The prescribed filing fee, search proceeding, must be on sheets of paper
fee, examination fee, and application that are the same size, not perma-
size fee, see § 1.16. nently bound together, and:
(c) A complete provisional applica- (i) Flexible, strong, smooth, non-
tion filed under § 1.53(c) comprises: shiny, durable, and white;
(ii) Either 21.0 cm by 29.7 cm (DIN
(1) A cover sheet identifying:
size A4) or 21.6 cm by 27.9 cm (81⁄2 by 11
(i) The application as a provisional
inches), with each sheet including a top
application,
margin of at least 2.0 cm (3⁄4 inch), a
(ii) The name or names of the inven- left side margin of at least 2.5 cm (1
tor or inventors, (see § 1.41(a)(2)), inch), a right side margin of at least 2.0
(iii) The residence of each named in- cm (3⁄4 inch), and a bottom margin of at
ventor, least 2.0 cm (3⁄4 inch);
(iv) The title of the invention, (iii) Written on only one side in por-
(v) The name and registration num- trait orientation;
ber of the attorney or agent (if applica- (iv) Plainly and legibly written ei-
ble), ther by a typewriter or machine print-
(vi) The docket number used by the er in permanent dark ink or its equiva-
person filing the application to iden- lent; and
tify the application (if applicable), (v) Presented in a form having suffi-
(vii) The correspondence address, and cient clarity and contrast between the
(viii) The name of the U.S. Govern- paper and the writing thereon to per-
ment agency and Government contract mit the direct reproduction of readily
number (if the invention was made by legible copies in any number by use of
an agency of the U.S. Government or photographic, electrostatic, photo-off-
under a contract with an agency of the set, and microfilming processes and
U.S. Government); electronic capture by use of digital im-
(2) A specification as prescribed by 35 aging and optical character recogni-
U.S.C. 112(a), see § 1.71; tion.
(3) Drawings, when necessary, see (2) All papers that are submitted on
§§ 1.81 to 1.85; and paper or by facsimile transmission and
(4) The prescribed filing fee and ap- are to become a part of the permanent
plication size fee, see § 1.16. records of the United States Patent
(d) Applicants are encouraged to file and Trademark Office should have no
an information disclosure statement in holes in the sheets as submitted.
nonprovisional applications. See § 1.97 (3) The provisions of this paragraph

and § 1.98. No information disclosure and paragraph (b) of this section do not
54
apply to the pre-printed information on (3) The claim or claims must com-
paper forms provided by the Office, or mence on a separate physical sheet or
to the copy of the patent submitted on electronic page (§ 1.75(h)).
paper in double column format as the (4) The abstract must commence on a
specification in a reissue application or separate physical sheet or electronic
request for reexamination. page or be submitted as the first page
(4) See § 1.58 for chemical and mathe- of the patent in a reissue application or
matical formulae and tables, and § 1.84 reexamination or supplemental exam-
for drawings. ination proceeding (§ 1.72(b)).
(5) Papers that are submitted elec- (5) Other than in a reissue applica-
tronically to the Office must be for- tion or a reexamination or supple-
matted and transmitted in compliance mental examination proceeding, the
with the Office’s electronic filing sys- pages of the specification including
tem requirements. claims and abstract must be numbered
(b) The application (specification, in- consecutively, starting with 1, the
cluding the claims, drawings, and the in- numbers being centrally located above
ventor’s oath or declaration) or reexam- or preferably, below, the text.
ination or supplemental examination pro- (6) Other than in a reissue applica-
ceeding, any amendments to the application or reexamination or supplemental
tion or reexamination proceeding, or any examination proceeding, the para-
corrections to the application, or reexam- graphs of the specification, other than
ination or supplemental examination pro- in the claims or abstract, may be num-
ceeding. (1) The application or pro- bered at the time the application is
ceeding and any amendments or correc- filed, and should be individually and
tions to the application (including any consecutively numbered using Arabic
translation submitted pursuant to numerals, so as to unambiguously iden-
paragraph (d) of this section) or pro- tify each paragraph. The number
ceeding, except as provided for in § 1.69 should consist of at least four numerals
and paragraph (d) of this section, must: enclosed in square brackets, including
(i) Comply with the requirements of leading zeros (e.g., [0001]). The numbers
paragraph (a) of this section; and and enclosing brackets should appear
(ii) Be in the English language or be to the right of the left margin as the
accompanied by a translation of the first item in each paragraph, before the
application and a translation of any first word of the paragraph, and should
corrections or amendments into the be highlighted in bold. A gap, equiva-
English language together with a lent to approximately four spaces,
statement that the translation is accu- should follow the number. Nontext ele-
rate. ments (e.g., tables, mathematical or
(2) The specification (including the chemical formulae, chemical struc-
abstract and claims) for other than re- tures, and sequence data) are consid-
issue applications and reexamination ered part of the numbered paragraph
or supplemental examination pro- around or above the elements, and
ceedings, and any amendments for ap- should not be independently numbered.
plications (including reissue applica- If a nontext element extends to the left
tions) and reexamination proceedings margin, it should not be numbered as a
to the specification, except as provided separate and independent paragraph. A
for in §§ 1.821 through 1.825, must have: list is also treated as part of the para-
(i) Lines that are 11⁄2 or double graph around or above the list, and
spaced; should not be independently numbered.
(ii) Text written in a nonscript type Paragraph or section headers (titles),
font (e.g., Arial, Times Roman, or Cou- whether abutting the left margin or
rier, preferably a font size of 12) let- centered on the page, are not consid-
tering style having capital letters ered paragraphs and should not be
which should be at least 0.3175 cm. numbered.
(0.125 inch) high, but may be no smaller (c) Interlineation, erasure, cancella-
than 0.21 cm. (0.08 inch) high (e.g., a tion, or other alteration of the applica-
font size of 6); and tion papers may be made before or

(iii) Only a single column of text. after the signing of the inventor’s oath
55
§ 1.52 37 CFR Ch. I (7–1–16 Edition)
or declaration referring to those appli- Memory (CD–ROM) or a Compact Disc-

cation papers, provided that the state- Recordable (CD–R) in compliance with
ments in the inventor’s oath or dec- this paragraph. A CD–ROM is a ‘‘read-
laration pursuant to § 1.63 remain ap- only’’ medium on which the data is
plicable to those application papers. A pressed into the disc so that it cannot
substitute specification (§ 1.125) may be be changed or erased. A CD–R is a
required if the application papers do ‘‘write once’’ medium on which once
not comply with paragraphs (a) and (b) the data is recorded, it is permanent
of this section. and cannot be changed or erased.
(d) A nonprovisional or provisional (3)(i) Each compact disc must con-
application under 35 U.S.C. 111 may be form to the International Organization
in a language other than English. for Standardization (ISO) 9660 stand-
(1) Nonprovisional application. If a ard, and the contents of each compact
nonprovisional application under 35 disc must be in compliance with the
U.S.C. 111(a) is filed in a language American Standard Code for Informa-
other than English, an English lan- tion Interchange (ASCII).
guage translation of the non-English (ii) Each compact disc must be en-
language application, a statement that closed in a hard compact disc case
the translation is accurate, and the within an unsealed padded and protec-
processing fee set forth in § 1.17(i) are tive mailing envelope and accompanied
required. If these items are not filed by a transmittal letter on paper in ac-
with the application, the applicant will cordance with paragraph (a) of this sec-
be notified and given a period of time tion. The transmittal letter must list
within which they must be filed in for each compact disc the machine for-
order to avoid abandonment. mat (e.g., IBM–PC, Macintosh), the op-
(2) Provisional application. If a provi- erating system compatibility (e.g., MS–
sional application under 35 U.S.C. DOS, MS-Windows, Macintosh, Unix), a
111(b) is filed in a language other than list of files contained on the compact
English, an English language trans- disc including their names, sizes in
lation of the non-English language pro- bytes, and dates of creation, plus any
visional application will not be re- other special information that is nec-
quired in the provisional application. essary to identify, maintain, and inter-
See § 1.78(a) for the requirements for pret (e.g., tables in landscape orienta-
claiming the benefit of such provi- tion should be identified as landscape
sional application in a nonprovisional orientation or be identified when in-
application. quired about) the information on the
(e) Electronic documents that are to be- compact disc. Compact discs submitted
come part of the permanent United States to the Office will not be returned to the
Patent and Trademark Office records in applicant.
the file of a patent application, or reexam- (4) Any compact disc must be sub-
ination or supplemental examination pro- mitted in duplicate unless it contains
ceeding. (1) The following documents only the ‘‘Sequence Listing’’ in com-
may be submitted to the Office on a puter readable form required by
compact disc in compliance with this § 1.821(e). The compact disc and dupli-
paragraph: cate copy must be labeled ‘‘Copy 1’’ and
(i) A computer program listing (see ‘‘Copy 2,’’ respectively. The trans-
§ 1.96); mittal letter which accompanies the
(ii) A ‘‘Sequence Listing’’ (submitted compact disc must include a statement
under § 1.821(c)); or that the two compact discs are iden-
(iii) Any individual table (see § 1.58) if tical. In the event that the two com-
the table is more than 50 pages in pact discs are not identical, the Office
length, or if the total number of pages will use the compact disc labeled
of all the tables in an application ex- ‘‘Copy 1’’ for further processing. Any
ceeds 100 pages in length, where a table amendment to the information on a
page is a page printed on paper in con- compact disc must be by way of a re-
formance with paragraph (b) of this placement compact disc in compliance
section and § 1.58(c). with this paragraph containing the
(2) A compact disc as used in this substitute information, and must be

part means a Compact Disc-Read Only accompanied by a statement that the
56
replacement compact disc contains no § 1.821(c) or (e), and any computer pro-
new matter. The compact disc and copy gram listing filed in an electronic me-
must be labeled ‘‘COPY 1 REPLACE- dium in compliance with §§ 1.52(e) and
MENT MM/DD/YYYY’’ (with the 1.96, are submitted in whole or in part
month, day and year of creation indi- on an electronic medium other than
cated), and ‘‘COPY 2 REPLACEMENT the Office electronic filing system,
MM/DD/YYYY,’’ respectively. each three kilobytes of content sub-
(5) The specification must contain an mitted on an electronic medium shall
incorporation-by-reference of the ma- be counted as a sheet of paper.
terial on the compact disc in a separate (2) Except as otherwise provided in
paragraph (§ 1.77(b)(5)), identifying each this paragraph, the paper size equiva-
compact disc by the names of the files lent of the specification and drawings
contained on each of the compact discs, of an application submitted via the Of-
their date of creation and their sizes in fice electronic filing system will be
bytes. The Office may require appli- considered to be seventy-five percent of
cant to amend the specification to in- the number of sheets of paper present
clude in the paper portion any part of in the specification and drawings of the
the specification previously submitted application when entered into the Of-
on compact disc. fice file wrapper after being rendered
(6) A compact disc must also be la- by the Office electronic filing system
beled with the following information: for purposes of determining the appli-
(i) The name of each inventor (if cation size fee required by § 1.16(s). Any
known); sequence listing in compliance with
(ii) Title of the invention; § 1.821(c) or (e), and any computer pro-
(iii) The docket number, or applica- gram listing in compliance with § 1.96,
tion number if known, used by the per- submitted via the Office electronic fil-
son filing the application to identify ing system will be excluded when de-
the application; termining the application size fee re-
(iv) A creation date of the compact quired by § 1.16(s) if the listing is sub-
disc; mitted in ASCII text as part of an asso-
(v) If multiple compact discs are sub- ciated file.
mitted, the label shall indicate their (Pub. L. 94–131, 89 Stat. 685; 35 U.S.C. 6, Pub.
order (e.g., ‘‘1 of X’’); and L. 97–247; 15 U.S.C. 1113, 1123)
(vi) An indication that the disc is
EDITORIAL NOTE: For FEDERAL REGISTER ci-
‘‘Copy 1’’ or ‘‘Copy 2’’ of the submis- tations affecting § 1.52, see the List of CFR
sion. See paragraph (b)(4) of this sec- Sections Affected, which appears in the
tion. Finding Aids section of the printed volume
(7) If a file is unreadable on both cop- and at www.fdsys.gov.
ies of the disc, the unreadable file will
be treated as not having been sub- § 1.53 Application number, filing date,
mitted. A file is unreadable if, for ex- and completion of application.
ample, it is of a format that does not (a) Application number. Any papers re-
comply with the requirements of para- ceived in the Patent and Trademark
graph (e)(3) of this section, it is cor- Office which purport to be an applica-
rupted by a computer virus, or it is tion for a patent will be assigned an ap-
written onto a defective compact disc. plication number for identification
(f)(1) Any sequence listing in an elec- purposes.
tronic medium in compliance with (b) Application filing requirements—
§§ 1.52(e) and 1.821(c) or (e), and any Nonprovisional application. The filing
computer program listing filed in an date of an application for patent filed
electronic medium in compliance with under this section, other than an appli-
§§ 1.52(e) and 1.96, will be excluded when cation for a design patent or a provi-
determining the application size fee re- sional application under paragraph (c)
quired by § 1.16(s) or § 1.492(j). For pur- of this section, is the date on which a
poses of determining the application specification, with or without claims,
size fee required by § 1.16(s) or § 1.492(j), is received in the Office. The filing date
for an application the specification and of an application for a design patent
drawings of which, excluding any se- filed under this section, except for a
quence listing in compliance with continued prosecution application
57
§ 1.53 37 CFR Ch. I (7–1–16 Edition)
under paragraph (d) of this section, is essing fee set forth in § 1.17(q) and be
the date on which the specification as filed prior to the earliest of:
prescribed by 35 U.S.C. 112, including at (i) Abandonment of the application
least one claim, and any required draw- filed under paragraph (b) of this sec-
ings are received in the Office. No new tion;
matter may be introduced into an ap- (ii) Payment of the issue fee on the
plication after its filing date. A con- application filed under paragraph (b) of
tinuing application, which may be a this section; or
continuation, divisional, or continu- (iii) Expiration of twelve months
ation-in-part application, may be filed after the filing date of the application
under the conditions specified in 35 filed under paragraph (b) of this sec-
U.S.C. 120, 121, 365(c), or 386(c) and tion.
§ 1.78. (3) A provisional application filed
(1) A continuation or divisional appli- under paragraph (c) of this section may
cation that names as inventors the be converted to a nonprovisional appli-
same or fewer than all of the inventors cation filed under paragraph (b) of this
named in the prior application may be section and accorded the original filing
filed under this paragraph or paragraph date of the provisional application. The
(d) of this section. conversion of a provisional application
(2) A continuation-in-part applica- to a nonprovisional application will
tion (which may disclose and claim not result in either the refund of any
subject matter not disclosed in the fee properly paid in the provisional ap-
prior application) or a continuation or plication or the application of any such
divisional application naming an in- fee to the filing fee, or any other fee,
ventor not named in the prior applica- for the nonprovisional application.
tion must be filed under this para- Conversion of a provisional application
graph. to a nonprovisional application under
(c) Application filing requirements— this paragraph will result in the term
Provisional application. The filing date of any patent to issue from the applica-
of a provisional application is the date tion being measured from at least the
on which a specification, with or with- filing date of the provisional applica-
out claims, is received in the Office. No tion for which conversion is requested.
amendment, other than to make the Thus, applicants should consider avoid-
provisional application comply with ing this adverse patent term impact by
the patent statute and all applicable filing a nonprovisional application
regulations, may be made to the provi- claiming the benefit of the provisional
sional application after the filing date application under 35 U.S.C. 119(e), rath-
of the provisional application. er than converting the provisional ap-
(1) A provisional application must plication into a nonprovisional applica-
also include the cover sheet required tion pursuant to this paragraph. A re-
by § 1.51(c)(1), which may be an applica- quest to convert a provisional applica-
tion data sheet (§ 1.76), or a cover letter tion to a nonprovisional application
identifying the application as a provi- must be accompanied by the fee set
sional application. Otherwise, the ap- forth in § 1.17(i) and an amendment in-
plication will be treated as an applica- cluding at least one claim as prescribed
tion filed under paragraph (b) of this by 35 U.S.C. 112(b), unless the provi-
section. sional application under paragraph (c)
(2) An application for patent filed of this section otherwise contains at
under paragraph (b) of this section may least one claim as prescribed by 35
be converted to a provisional applica- U.S.C. 112(b). The nonprovisional appli-
tion and be accorded the original filing cation resulting from conversion of a
date of the application filed under provisional application must also in-
paragraph (b) of this section. The grant clude the filing fee, search fee, and ex-
of such a request for conversion will amination fee for a nonprovisional ap-
not entitle applicant to a refund of the plication, and the surcharge required
fees that were properly paid in the ap- by § 1.16(f) if either the basic filing fee
plication filed under paragraph (b) of for a nonprovisional application or the
this section. Such a request for conver- inventor’s oath or declaration was not
sion must be accompanied by the proc- present on the filing date accorded the
58
resulting nonprovisional application (2) The filing date of a continued

(i.e., the filing date of the original pro- prosecution application is the date on
visional application). A request to con- which a request on a separate paper for
vert a provisional application to a non- an application under this paragraph is
provisional application must also be filed. An application filed under this
filed prior to the earliest of: paragraph:
(i) Abandonment of the provisional (i) Must identify the prior applica-
application filed under paragraph (c) of tion;
this section; or (ii) Discloses and claims only subject
(ii) Expiration of twelve months after matter disclosed in the prior applica-
the filing date of the provisional appli- tion;
cation filed under paragraph (c) of this (iii) Names as inventors the same in-
section. ventors named in the prior application
(4) A provisional application is not on the date the application under this
entitled to the right of priority under paragraph was filed, except as provided
35 U.S.C. 119, 365(a), or 386(a) or § 1.55, in paragraph (d)(4) of this section;
or to the benefit of an earlier filing (iv) Includes the request for an appli-
date under 35 U.S.C. 120, 121, 365(c), or cation under this paragraph, will uti-
386(c) or § 1.78 of any other application. lize the file jacket and contents of the
No claim for priority under 35 U.S.C. prior application, including the speci-
119(e) or § 1.78(a) may be made in a de- fication, drawings and the inventor’s
sign application based on a provisional oath or declaration from the prior ap-
application. The requirements of plication, to constitute the new appli-
§§ 1.821 through 1.825 regarding applica- cation, and will be assigned the appli-
tion disclosures containing nucleotide cation number of the prior application
and/or amino acid sequences are not for identification purposes; and
mandatory for provisional applica- (v) Is a request to expressly abandon
tions. the prior application as of the filing
date of the request for an application
(d) Application filing requirements—
under this paragraph.
Continued prosecution (nonprovisional)
(3) The filing fee, search fee, and ex-
application. (1) A continuation or divi-
amination fee for a continued prosecu-
sional application (but not a continu-
tion application filed under this para-
ation-in-part) of a prior nonprovisional
graph are the basic filing fee as set
application may be filed as a continued
forth in § 1.16(b), the search fee as set
prosecution application under this
forth in § 1.16(l), and the examination
paragraph, provided that:
fee as set forth in § 1.16(p).
(i) The application is for a design pat- (4) An application filed under this
ent; paragraph may be filed by fewer than
(ii) The prior nonprovisional applica- all the inventors named in the prior ap-
tion is a design application, but not an plication, provided that the request for
international design application, that an application under this paragraph
is complete as defined by § 1.51(b), ex- when filed is accompanied by a state-
cept for the inventor’s oath or declara- ment requesting deletion of the name
tion if the application is filed on or or names of the person or persons who
after September 16, 2012, and the prior are not inventors of the invention
nonprovisional application contains an being claimed in the new application.
application data sheet meeting the No person may be named as an inven-
conditions specified in § 1.53(f)(3)(i); and tor in an application filed under this
(iii) The application under this para- paragraph who was not named as an in-
graph is filed before the earliest of: ventor in the prior application on the
(A) Payment of the issue fee on the date the application under this para-
prior application, unless a petition graph was filed, except by way of cor-
under § 1.313(c) is granted in the prior rection of inventorship under § 1.48.
application; (5) Any new change must be made in
(B) Abandonment of the prior appli- the form of an amendment to the prior
cation; or application as it existed prior to the
(C) Termination of proceedings on filing of an application under this para-

the prior application. graph. No amendment in an application
59
§ 1.53 37 CFR Ch. I (7–1–16 Edition)
under this paragraph (a continued pros- tion in which the request was filed is
ecution application) may introduce not a design application, and if the ap-
new matter or matter that would have plication in which the request was filed
been new matter in the prior applica- was itself filed on or after June 8, 1995,
tion. Any new specification filed with the request for an application under
the request for an application under paragraph (d) of this section will be
this paragraph will not be considered treated as a request for continued ex-
part of the original application papers, amination under § 1.114.
but will be treated as a substitute spec- (2) Any request for review of a notifi-
ification in accordance with § 1.125. cation pursuant to paragraph (e)(1) of
(6) The filing of a continued prosecu-
this section, or a notification that the
tion application under this paragraph
original application papers lack a por-
will be construed to include a waiver of
confidentiality by the applicant under tion of the specification or drawing(s),
35 U.S.C. 122 to the extent that any must be by way of a petition pursuant
member of the public, who is entitled to this paragraph accompanied by the
under the provisions of § 1.14 to access fee set forth in § 1.17(f). In the absence
to, copies of, or information concerning of a timely (§ 1.181(f)) petition pursuant
either the prior application or any con- to this paragraph, the filing date of an
tinuing application filed under the pro- application in which the applicant was
visions of this paragraph, may be given notified of a filing error pursuant to
similar access to, copies of, or similar paragraph (e)(1) of this section will be
information concerning the other ap- the date the filing error is corrected.
plication or applications in the file (3) If an applicant is notified of a fil-
jacket. ing error pursuant to paragraph (e)(1)
(7) A request for an application under of this section, but fails to correct the
this paragraph is the specific reference filing error within the given time pe-
required by 35 U.S.C. 120 to every appli- riod or otherwise timely (§ 1.181(f)) take
cation assigned the application number action pursuant to this paragraph, pro-
identified in such request. No amend- ceedings in the application will be con-
ment in an application under this para- sidered terminated. Where proceedings
graph may delete this specific ref- in an application are terminated pursu-
erence to any prior application.
ant to this paragraph, the application
(8) In addition to identifying the ap-
may be disposed of, and any filing fees,
plication number of the prior applica-
less the handling fee set forth in
tion, applicant should furnish in the re-
quest for an application under this § 1.21(n), will be refunded.
paragraph the following information (f) Completion of application subsequent
relating to the prior application to the to filing—Nonprovisional (including con-
best of his or her ability: tinued prosecution or reissue) application.
(i) Title of invention; (1) If an application which has been ac-
(ii) Name of applicant(s); and corded a filing date pursuant to para-
(iii) Correspondence address. graph (b) or (d) of this section does not
(9) See § 1.103(b) for requesting a lim- include the basic filing fee, search fee,
ited suspension of action in an applica- or examination fee, or if an application
tion filed under this paragraph. which has been accorded a filing date
(e) Failure to meet filing date require- pursuant to paragraph (b) of this sec-
ments. (1) If an application deposited tion does not include at least one claim
under paragraph (b), (c), or (d) of this or the inventor’s oath or declaration
section does not meet the requirements (§§ 1.63, 1.64, 1.162, or 1.175), and the ap-
of such paragraph to be entitled to a plicant has provided a correspondence
filing date, applicant will be so noti- address (§ 1.33(a)), the applicant will be
fied, if a correspondence address has notified and given a period of time
been provided, and given a period of within which to file a claim or claims,
time within which to correct the filing pay the basic filing fee, search fee, and
error. If, however, a request for an ap-
examination fee, and pay the surcharge
plication under paragraph (d) of this
if required by § 1.16(f), to avoid aban-

section does not meet the requirements
of that paragraph because the applica- donment.
60
(2) If an application which has been ance with § 1.63, or substitute state-
accorded a filing date pursuant to para- ment in compliance with § 1.64, has
graph (b) of this section does not in- been filed before the application is in
clude the basic filing fee, search fee, condition for allowance.
examination fee, at least one claim, or (4) If the excess claims fees required
the inventor’s oath or declaration, and by § 1.16(h) and (i) and multiple depend-
the applicant has not provided a cor- ent claim fee required by § 1.16(j) are
respondence address (§ 1.33(a)), the ap- not paid on filing or on later presen-
plicant has three months from the fil- tation of the claims for which the ex-
ing date of the application within cess claims or multiple dependent
which to file a claim or claims, pay the claim fees are due, the fees required by
basic filing fee, search fee, and exam- § 1.16(h), (i), and (j) must be paid or the
ination fee, and pay the surcharge re- claims canceled by amendment prior to
quired by § 1.16(f), to avoid abandon- the expiration of the time period set
ment. for reply by the Office in any notice of
(3) The inventor’s oath or declaration fee deficiency. If the application size
in an application under § 1.53(b) must fee required by § 1.16(s) (if any) is not
also be filed within the period specified paid on filing or on later presentation
in paragraph (f)(1) or (f)(2) of this sec- of the amendment necessitating a fee
tion, except that the filing of the in- or additional fee under § 1.16(s), the fee
ventor’s oath or declaration may be required by § 1.16(s) must be paid prior
postponed until the application is oth- to the expiration of the time period set
erwise in condition for allowance under for reply by the Office in any notice of
the conditions specified in paragraphs fee deficiency in order to avoid aban-
(f)(3)(i) and (f)(3)(ii) of this section. donment.
(i) The application must be an origi- (5) This paragraph applies to continu-
nal (non-reissue) application that con- ation or divisional applications under
tains an application data sheet in ac- paragraphs (b) or (d) of this section and
cordance with § 1.76 identifying: to continuation-in-part applications
(A) Each inventor by his or her legal under paragraph (b) of this section. See
name; § 1.63(d) concerning the submission of a
(B) A mailing address where the in- copy of the inventor’s oath or declara-
ventor customarily receives mail, and tion from the prior application for a
residence, if an inventor lives at a loca- continuing application under para-
tion which is different from where the graph (b) of this section.
inventor customarily receives mail, for (6) If applicant does not pay the basic
each inventor. filing fee during the pendency of the
(ii) The applicant must file each reapplication, the Office may dispose of
quired oath or declaration in compli- the application.
ance with § 1.63, or substitute state- (g) Completion of application subse-
ment in compliance with § 1.64, no later quent to filing—Provisional application.
than the date on which the issue fee for (1) If a provisional application which
the patent is paid. If the applicant is has been accorded a filing date pursu-
notified in a notice of allowability that ant to paragraph (c) of this section
an oath or declaration in compliance does not include the cover sheet re-
with § 1.63, or substitute statement in quired by § 1.51(c)(1) or the basic filing
compliance with § 1.64, executed by or fee (§ 1.16(d)), and applicant has pro-
with respect to each named inventor vided a correspondence address
has not been filed, the applicant must (§ 1.33(a)), applicant will be notified and
file each required oath or declaration given a period of time within which to
in compliance with § 1.63, or substitute pay the basic filing fee, file a cover
statement in compliance with § 1.64, no sheet (§ 1.51(c)(1)), and pay the sur-
later than the date on which the issue charge required by § 1.16(g) to avoid
fee is paid to avoid abandonment. This abandonment.
time period is not extendable under (2) If a provisional application which
§ 1.136 (see § 1.136(c)). The Office may has been accorded a filing date pursu-
dispense with the notice provided for in ant to paragraph (c) of this section
paragraph (f)(1) of this section if each does not include the cover sheet re-
required oath or declaration in compli- quired by § 1.51(c)(1) or the basic filing
61
§ 1.54 37 CFR Ch. I (7–1–16 Edition)
fee (§ 1.16(d)), and applicant has not must accompany each part, accurately
provided a correspondence address and clearly connecting it with the
(§ 1.33(a)), applicant has two months other parts of the application. See § 1.53
from the filing date of the application (f) and (g) with regard to completion of
within which to pay the basic filing an application.
fee, file a cover sheet (§ 1.51(c)(1)), and (b) Applicant will be informed of the
pay the surcharge required by § 1.16(g) application number and filing date by a
to avoid abandonment. filing receipt, unless the application is
(3) If the application size fee required an application filed under § 1.53(d). A
by § 1.16(s) (if any) is not paid on filing, letter limited to a request for a filing
the fee required by § 1.16(s) must be receipt may be signed by a juristic ap-
paid prior to the expiration of the time plicant or patent owner.
period set for reply by the Office in any
notice of fee deficiency in order to [62 FR 53188, Oct. 10, 1997, as amended at 78
FR 62399, Oct. 21, 2013]
avoid abandonment.
(4) If applicant does not pay the basic § 1.55 Claim for foreign priority.
filing fee during the pendency of the
application, the Office may dispose of (a) In general. An applicant in a non-
the application. provisional application may claim pri-
(h) Subsequent treatment of applica- ority to one or more prior foreign ap-
tion—Nonprovisional (including contin- plications under the conditions speci-
ued prosecution) application. An applica- fied in 35 U.S.C. 119(a) through (d) and
tion for a patent filed under paragraphs (f), 172, 365(a) and (b), and 386(a) and (b)
(b) or (d) of this section will not be and this section.
placed on the files for examination (b) Time for filing subsequent applica-
until all its required parts, complying tion. The nonprovisional application
with the rules relating thereto, are re- must be:
ceived, except that the inventor’s oath (1) Filed not later than twelve
or declaration may be filed when the months (six months in the case of a de-
application is otherwise in condition sign application) after the date on
for allowance pursuant to paragraph which the foreign application was filed,
(f)(3) of this section and minor infor- subject to paragraph (c) of this section
malities may be waived subject to sub- (a subsequent application); or
sequent correction whenever required. (2) Entitled to claim the benefit
(i) Subsequent treatment of applica- under 35 U.S.C. 120, 121, 365(c), or 386(c)
tion—Provisional application. A provi- of a subsequent application that was
sional application for a patent filed filed within the period set forth in
under paragraph (c) of this section will paragraph (b)(1) of this section.
not be placed on the files for examina- (c) Delayed filing of subsequent appli-
tion and will become abandoned no cation. If the subsequent application
later than twelve months after its fil- has a filing date which is after the ex-
ing date pursuant to 35 U.S.C. 111(b)(1). piration of the period set forth in para-
[62 FR 53186, Oct. 10, 1997, as amended at 63 graph (b)(1) of this section, but within
FR 5734, Feb. 4, 1998; 65 FR 14871, Mar. 20, two months from the expiration of the
2000; 65 FR 50104, Aug. 16, 2000; 65 FR 54665, period set forth in paragraph (b)(1) of
Sept. 8, 2000; 65 FR 78960, Dec. 18, 2000; 68 FR this section, the right of priority in the
14336, Mar. 25, 2003; 68 FR 32380, May 30, 2003; subsequent application may be restored
69 FR 29878, May 26, 2004; 69 FR 56539, Sept. under PCT Rule 26bis.3 for an inter-
21, 2004; 70 FR 3890, Jan. 27, 2005; 70 FR 30365,
national application, or upon petition
May 26, 2005; 72 FR 46836, Aug. 21, 2007; 74 FR
52688, Oct. 14, 2009; 77 FR 48817, Aug. 14, 2012; pursuant to this paragraph, if the delay
78 FR 11053, Feb. 14, 2013; 78 FR 62398, Oct. 21, in filing the subsequent application
2013; 79 FR 12386, Mar. 5, 2014; 80 FR 17956, within the period set forth in para-
Apr. 2, 2015] graph (b)(1) of this section was unin-
tentional. A petition to restore the
§ 1.54 Parts of application to be filed right of priority under this paragraph
together; filing receipt. filed on or after May 13, 2015, must be
(a) It is desirable that all parts of the filed in the subsequent application, or
complete application be deposited in in the earliest nonprovisional applica-

the Office together; otherwise, a letter tion claiming benefit under 35 U.S.C.
62
120, 121, 365(c), or 386(c) to the subse- claim for priority under 35 U.S.C. 119(a)
quent application, if such subsequent through (d) or (f), 365(a) or (b), or 386(a)
application is not a nonprovisional ap- or 386(b) not presented in the manner
plication. Any petition to restore the required by paragraph (d) or (m) of this
right of priority under this paragraph section during pendency and within the
must include: time period provided by paragraph (d)
(1) The priority claim under 35 U.S.C. of this section (if applicable) is consid-
119(a) through (d) or (f), 365(a) or (b), or ered to have been waived. If a claim for
386(a) or (b) in an application data priority is considered to have been
sheet (§ 1.76(b)(6)), identifying the for- waived under this section, the claim
eign application to which priority is may be accepted if the priority claim
claimed, by specifying the application was unintentionally delayed. A peti-
number, country (or intellectual prop- tion to accept a delayed claim for pri-
erty authority), day, month, and year ority under 35 U.S.C. 119(a) through (d)
of its filing, unless previously sub-
or (f), 365(a) or (b), or 386(a) or 386(b)
mitted;
must be accompanied by:
(2) The petition fee as set forth in
§ 1.17(m); and (1) The priority claim under 35 U.S.C.
(3) A statement that the delay in fil- 119(a) through (d) or (f), 365(a) or (b), or
ing the subsequent application within 386(a) or 386(b) in an application data
the period set forth in paragraph (b)(1) sheet (§ 1.76(b)(6)), identifying the for-
of this section was unintentional. The eign application to which priority is
Director may require additional infor- claimed, by specifying the application
mation where there is a question number, country (or intellectual prop-
whether the delay was unintentional. erty authority), day, month, and year
(d) Time for filing priority claim—(1) of its filing, unless previously sub-
Application under 35 U.S.C. 111(a). The mitted;
claim for priority must be filed within (2) A certified copy of the foreign ap-
the later of four months from the ac- plication, unless previously submitted
tual filing date of the application or or an exception in paragraph (h), (i), or
sixteen months from the filing date of (j) of this section applies;
the prior foreign application in an (3) The petition fee as set forth in
original application filed under 35 § 1.17(m); and
U.S.C. 111(a), except as provided in (4) A statement that the entire delay
paragraph (e) of this section. The claim between the date the priority claim
for priority must be presented in an ap- was due under this section and the date
plication data sheet (§ 1.76(b)(6)) and the priority claim was filed was unin-
must identify the foreign application tentional. The Director may require
to which priority is claimed by speci-
additional information where there is a
fying the application number, country
question whether the delay was unin-
(or intellectual property authority),
tentional.
day, month, and year of its filing. The
time periods in this paragraph do not (f) Time for filing certified copy of for-
apply if the later-filed application is: eign application—(1) Application under 35
(i) An application for a design patent; U.S.C. 111(a). A certified copy of the
or foreign application must be filed with-
(ii) An application filed under 35 in the later of four months from the ac-
U.S.C. 111(a) before November 29, 2000. tual filing date of the application, or
(2) Application under 35 U.S.C. 371. The sixteen months from the filing date of
claim for priority must be made within the prior foreign application, in an
the time limit set forth in the PCT and original application under 35 U.S.C.
the Regulations under the PCT in an 111(a) filed on or after March 16, 2013,
international application entering the except as provided in paragraphs (h),
national stage under 35 U.S.C. 371, ex- (i), and (j) of this section. The time pe-
cept as provided in paragraph (e) of riod in this paragraph does not apply in
this section. a design application.
(e) Delayed priority claim. Unless such (2) Application under 35 U.S.C. 371. A
claim is accepted in accordance with certified copy of the foreign applica-

the provisions of this paragraph, any tion must be filed within the time
63
§ 1.55 37 CFR Ch. I (7–1–16 Edition)
limit set forth in the PCT and the Reg- copy of the foreign application be filed
ulations under the PCT in an inter- earlier than otherwise provided in this
national application entering the na- section:
tional stage under 35 U.S.C. 371. If a (i) When the application is involved
certified copy of the foreign applica- in an interference (see § 41.202 of this
tion is not filed during the inter- chapter) or derivation (see part 42 of
national stage in an international ap- this chapter) proceeding;
plication in which the national stage (ii) When necessary to overcome the
commenced on or after December 18, date of a reference relied upon by the
2013, a certified copy of the foreign ap- examiner; or
plication must be filed within the later (iii) When deemed necessary by the
of four months from the date on which examiner.
the national stage commenced under 35 (3) An English language translation
U.S.C. 371(b) or (f) (§ 1.491(a)), four of a non-English language foreign ap-
months from the date of the initial plication is not required except:
submission under 35 U.S.C. 371 to enter (i) When the application is involved
the national stage, or sixteen months in an interference (see § 41.202 of this
from the filing date of the prior foreign chapter) or derivation (see part 42 of
application, except as provided in para- this chapter) proceeding;
graphs (h), (i), and (j) of this section. (ii) When necessary to overcome the
(3) If a certified copy of the foreign date of a reference relied upon by the
application is not filed within the time examiner; or
period specified paragraph (f)(1) of this (iii) When specifically required by
section in an application under 35 the examiner.
U.S.C. 111(a) or within the period speci- (4) If an English language translation
fied in paragraph (f)(2) of this section of a non-English language foreign ap-
in an international application enter- plication is required, it must be filed
ing the national stage under 35 U.S.C. together with a statement that the
371, and an exception in paragraph (h), translation of the certified copy is ac-
(i), or (j) of this section is not applica- curate.
ble, the certified copy of the foreign (h) Certified copy in another U.S. pat-
application must be accompanied by a ent or application. The requirement in
petition including a showing of good paragraphs (f) and (g) of this section
and sufficient cause for the delay and for a certified copy of the foreign appli-
the petition fee set forth in § 1.17(g). cation will be considered satisfied in a
(g) Requirement for filing priority claim, reissue application if the patent for
certified copy of foreign application, and which reissue is sought satisfies the re-
translation in any application. (1) The quirement of this section for a certified
claim for priority and the certified copy of the foreign application and
copy of the foreign application speci- such patent is identified as containing
fied in 35 U.S.C. 119(b) or PCT Rule 17 a certified copy of the foreign applica-
must, in any event, be filed within the tion. The requirement in paragraphs (f)
pendency of the application, unless and (g) of this section for a certified
filed with a petition under paragraph copy of the foreign application will
(e) or (f) of this section, or with a peti- also be considered satisfied in an appli-
tion accompanied by the fee set forth cation if a prior-filed nonprovisional
in § 1.17(g) which includes a showing of application for which a benefit is
good and sufficient cause for the delay claimed under 35 U.S.C. 120, 121, 365(c),
in filing the certified copy of the for- or 386(c) contains a certified copy of
eign application in a design applica- the foreign application and such prior-
tion. If the claim for priority or the filed nonprovisional application is
certified copy of the foreign applica- identified as containing a certified
tion is filed after the date the issue fee copy of the foreign application.
is paid, the patent will not include the (i) Foreign intellectual property office
priority claim unless corrected by a participating in a priority document ex-
certificate of correction under 35 U.S.C. change agreement. The requirement in
255 and § 1.323. paragraphs (f) and (g) of this section
(2) The Office may require that the for a certified copy of the foreign appli-
claim for priority and the certified cation to be filed within the time limit
64
set forth therein will be considered sat- months from the date of the initial
isfied if: submission under 35 U.S.C. 371 to enter
(1) The foreign application was filed the national stage, or the request must
in a foreign intellectual property office be accompanied by a petition under
participating with the Office in a bilat- paragraph (e) or (f) of this section.
eral or multilateral priority document (j) Interim copy. The requirement in
exchange agreement (participating for- paragraph (f) of this section for a cer-
eign intellectual property office), or a tified copy of the foreign application to
copy of the foreign application was be filed within the time limit set forth
filed in an application subsequently therein will be considered satisfied if:
filed in a participating foreign intellec- (1) A copy of the original foreign ap-
tual property office that permits the plication clearly labeled as ‘‘Interim
Office to obtain such a copy; Copy,’’ including the specification, and
(2) The claim for priority is presented any drawings or claims upon which it
in an application data sheet is based, is filed in the Office together
(§ 1.76(b)(6)), identifying the foreign ap- with a separate cover sheet identifying
plication for which priority is claimed, the foreign application by specifying
by specifying the application number, the application number, country (or in-
country (or intellectual property au- tellectual property authority), day,
thority), day, month, and year of its month, and year of its filing, and stat-
filing, and the applicant provides the ing that the copy filed in the Office is
information necessary for the partici- a true copy of the original application
pating foreign intellectual property of- as filed in the foreign country (or intel-
fice to provide the Office with access to lectual property authority);
the foreign application; (2) The copy of the foreign applica-
(3) The copy of the foreign application and separate cover sheet are filed
tion is received by the Office from the within the later of sixteen months
participating foreign intellectual prop- from the filing date of the prior foreign
erty office, or a certified copy of the application, four months from the ac-
foreign application is filed, within the tual filing date of an application under
period specified in paragraph (g)(1) of 35 U.S.C. 111(a), four months from the
this section; and date on which the national stage com-
(4) The applicant files in a separate menced under 35 U.S.C. 371(b) or (f)
document a request that the Office ob- (§ 1.491(a)), four months from the date
tain a copy of the foreign application of the initial submission under 35
from a participating intellectual prop- U.S.C. 371 to enter the national stage,
erty office that permits the Office to or with a petition under paragraph (e)
obtain such a copy where, although the or (f) of this section; and
foreign application was not filed in a (3) A certified copy of the foreign ap-
participating foreign intellectual prop- plication is filed within the period
erty office, a copy of the foreign appli- specified in paragraph (g)(1) of this sec-
cation was filed in an application sub- tion.
sequently filed in a participating for- (k) Requirements for certain applica-
eign intellectual property office that tions filed on or after March 16, 2013. If a
permits the Office to obtain such a nonprovisional application filed on or
copy. The request must identify the after March 16, 2013, other than a non-
participating intellectual property of- provisional international design appli-
fice and the subsequent application by cation, claims priority to a foreign ap-
the application number, day, month, plication filed prior to March 16, 2013,
and year of its filing in which a copy of and also contains, or contained at any
the foreign application was filed. The time, a claim to a claimed invention
request must be filed within the later that has an effective filing date as de-
of sixteen months from the filing date fined in § 1.109 that is on or after March
of the prior foreign application, four 16, 2013, the applicant must provide a
months from the actual filing date of statement to that effect within the
an application under 35 U.S.C. 111(a), later of four months from the actual
four months from the date on which filing date of the nonprovisional appli-
the national stage commenced under 35 cation, four months from the date of
U.S.C. 371(b) or (f) (§ 1.491(a)), or four entry into the national stage as set
65
§ 1.56 37 CFR Ch. I (7–1–16 Edition)
forth in § 1.491 in an international ap- tion number, country (or intellectual

plication, sixteen months from the fil- property authority), day, month, and
ing date of the prior foreign applica- year of its filing. In a nonprovisional
tion, or the date that a first claim to a international design application, the
claimed invention that has an effective priority claim and certified copy must
filing date on or after March 16, 2013, is be furnished in accordance with the
presented in the nonprovisional appli- time period and other conditions set
cation. An applicant is not required to forth in paragraph (g) of this section.
provide such a statement if the appli- (n) Applications filed before September
cant reasonably believes on the basis of 16, 2012. Notwithstanding the require-
information already known to the indi- ment in paragraphs (d)(1), (e)(1), and
viduals designated in § 1.56(c) that the (i)(2) of this section that any priority
nonprovisional application does not, claim be presented in an application
and did not at any time, contain a data sheet (§ 1.76), this requirement in
claim to a claimed invention that has paragraphs (d)(1), (e)(1), and (i)(2) of
an effective filing date on or after this section will be satisfied by the
March 16, 2013. presentation of such priority claim in
(l) Inventor’s certificates. An applicant the oath or declaration under § 1.63 in a
in a nonprovisional application may nonprovisional application filed under
under certain circumstances claim pri- 35 U.S.C. 111(a) before September 16,
ority on the basis of one or more appli- 2012, or resulting from an international
cations for an inventor’s certificate in application filed under 35 U.S.C. 363 be-
a country granting both inventor’s cer- fore September 16, 2012. The provisions
tificates and patents. To claim the of this paragraph do not apply to any
right of priority on the basis of an ap- priority claim submitted for a petition
plication for an inventor’s certificate under paragraph (c) of this section to
in such a country under 35 U.S.C. restore the right of priority to a for-
119(d), the applicant, when submitting eign application.
a claim for such right as specified in (o) Priority under 35 U.S.C. 386(a) or
this section, must include an affidavit (b). The right of priority under 35
or declaration. The affidavit or dec- U.S.C. 386(a) or (b) with respect to an
laration must include a specific state- international design application is ap-
ment that, upon an investigation, he or plicable only to nonprovisional appli-
she is satisfied that to the best of his cations, international applications, and
or her knowledge, the applicant, when international design applications filed
filing the application for the inventor’s on or after May 13, 2015, and patents
certificate, had the option to file an ap- issuing thereon.
plication for either a patent or an in- (p) Time periods in this section. The
ventor’s certificate as to the subject time periods set forth in this section
matter of the identified claim or are not extendable, but are subject to
claims forming the basis for the claim 35 U.S.C. 21(b) (and § 1.7(a)), PCT Rule
of priority. 80.5, and Hague Agreement Rule 4(4).
(m) Time for filing priority claim and [80 FR 17956, Apr. 2, 2015]
certified copy of foreign application in an
international design application desig- § 1.56 Duty to disclose information ma-
nating the United States. In an inter- terial to patentability.
national design application designating (a) A patent by its very nature is af-
the United States, the claim for pri- fected with a public interest. The pub-
ority may be made in accordance with lic interest is best served, and the most
the Hague Agreement and the Hague effective patent examination occurs
Agreement Regulations. In a nonprovi- when, at the time an application is
sional international design application, being examined, the Office is aware of
the priority claim, unless made in ac- and evaluates the teachings of all in-
cordance with the Hague Agreement formation material to patentability.
and the Hague Agreement Regulations, Each individual associated with the fil-
must be presented in an application ing and prosecution of a patent appli-
data sheet (§ 1.76(b)(6)), identifying the cation has a duty of candor and good
foreign application for which priority faith in dealing with the Office, which
is claimed, by specifying the applica- includes a duty to disclose to the Office
66
all information known to that indi- A prima facie case of unpatentability

vidual to be material to patentability is established when the information
as defined in this section. The duty to compels a conclusion that a claim is
disclose information exists with re- unpatentable under the preponderance
spect to each pending claim until the of evidence, burden-of-proof standard,
claim is cancelled or withdrawn from giving each term in the claim its
consideration, or the application be- broadest reasonable construction con-
comes abandoned. Information mate- sistent with the specification, and be-
rial to the patentability of a claim that fore any consideration is given to evi-
is cancelled or withdrawn from consid- dence which may be submitted in an
eration need not be submitted if the in- attempt to establish a contrary conclu-
formation is not material to the pat- sion of patentability.
entability of any claim remaining (c) Individuals associated with the
under consideration in the application. filing or prosecution of a patent appli-
There is no duty to submit information cation within the meaning of this sec-
which is not material to the patent- tion are:
ability of any existing claim. The duty (1) Each inventor named in the appli-
to disclose all information known to be cation;
material to patentability is deemed to (2) Each attorney or agent who pre-
be satisfied if all information known to pares or prosecutes the application;
be material to patentability of any and
(3) Every other person who is sub-
claim issued in a patent was cited by
stantively involved in the preparation
the Office or submitted to the Office in
or prosecution of the application and
the manner prescribed by §§ 1.97(b)–(d)
who is associated with the inventor,
and 1.98. However, no patent will be
the applicant, an assignee, or anyone
granted on an application in connec-
to whom there is an obligation to as-
tion with which fraud on the Office was
sign the application.
practiced or attempted or the duty of
(d) Individuals other than the attor-
disclosure was violated through bad
ney, agent or inventor may comply
faith or intentional misconduct. The with this section by disclosing infor-
Office encourages applicants to care- mation to the attorney, agent, or in-
fully examine: ventor.
(1) Prior art cited in search reports of (e) In any continuation-in-part appli-
a foreign patent office in a counterpart cation, the duty under this section in-
application, and cludes the duty to disclose to the Office
(2) The closest information over all information known to the person to
which individuals associated with the be material to patentability, as defined
filing or prosecution of a patent appli- in paragraph (b) of this section, which
cation believe any pending claim became available between the filing
patentably defines, to make sure that date of the prior application and the
any material information contained national or PCT international filing
therein is disclosed to the Office. date of the continuation-in-part appli-
(b) Under this section, information is cation.
material to patentability when it is
not cumulative to information already FR 54666, Sept. 8, 2000; 77 FR 48818, Aug. 14,
of record or being made of record in the 2012]
application, and
(1) It establishes, by itself or in com- § 1.57 Incorporation by reference.
bination with other information, a (a) Subject to the conditions and re-
prima facie case of unpatentability of a quirements of this paragraph, a ref-
claim; or erence made in the English language in
(2) It refutes, or is inconsistent with, an application data sheet in accordance
a position the applicant takes in: with § 1.76 upon the filing of an applica-
(i) Opposing an argument of tion under 35 U.S.C. 111(a) to a pre-
unpatentability relied on by the Office, viously filed application, indicating
or that the specification and any draw-
(ii) Asserting an argument of patent- ings of the application under 35 U.S.C.

ability. 111(a) are replaced by the reference to
67
§ 1.57 37 CFR Ch. I (7–1–16 Edition)
the previously filed application, and viously filed application, or be accom-

specifying the previously filed applica- panied by a petition including a show-
tion by application number, filing date, ing of good and sufficient cause for the
and the intellectual property authority delay and the petition fee set forth in
or country in which the previously § 1.17(g).
filed application was filed, shall con- (b) Subject to the conditions and re-
stitute the specification and any draw- quirements of this paragraph, if all or
ings of the application under 35 U.S.C. a portion of the specification or draw-
111(a) for purposes of a filing date ing(s) is inadvertently omitted from an
under § 1.53(b). application, but the application con-
(1) If the applicant has provided a tains a claim under § 1.55 for priority of
correspondence address (§ 1.33(a)), the a prior-filed foreign application or a
applicant will be notified and given a claim under § 1.78 for the benefit of a
period of time within which to file a prior-filed provisional, nonprovisional,
copy of the specification and drawings international application, or inter-
from the previously filed application, national design application, that was
an English language translation of the present on the filing date of the appli-
previously filed application, and the cation, and the inadvertently omitted
fee required by § 1.17(i) if it is in a lan- portion of the specification or draw-
guage other than English, and pay the ing(s) is completely contained in the
surcharge required by § 1.16(f), to avoid prior-filed application, the claim under
abandonment. Such a notice may be § 1.55 or 1.78 shall also be considered an
combined with a notice under § 1.53(f). incorporation by reference of the prior-
(2) If the applicant has not provided a filed application as to the inadvert-
correspondence address (§ 1.33(a)), the ently omitted portion of the specifica-
applicant has three months from the tion or drawing(s).
filing date of the application to file a (1) The application must be amended
copy of the specification and drawings to include the inadvertently omitted
from the previously filed application, portion of the specification or draw-
an English language translation of the ing(s) within any time period set by
previously filed application, and the the Office, but in no case later than the
fee required by § 1.17(i) if it is in a lan- close of prosecution as defined by
guage other than English, and pay the § 1.114(b), or abandonment of the appli-
surcharge required by § 1.16(f), to avoid cation, whichever occurs earlier. The
abandonment. applicant is also required to:
(3) An application abandoned under (i) Supply a copy of the prior-filed
paragraph (a)(1) or (a)(2) of this section application, except where the prior-
shall be treated as having never been filed application is an application filed
filed, unless: under 35 U.S.C. 111;
(i) The application is revived under (ii) Supply an English language
§ 1.137; and translation of any prior-filed applica-
(ii) A copy of the specification and tion that is in a language other than
any drawings of the previously filed ap- English; and
plication are filed in the Office. (iii) Identify where the inadvertently
(4) A certified copy of the previously omitted portion of the specification or
filed application must be filed in the drawings can be found in the prior-filed
Office, unless the previously filed ap- application.
plication is an application filed under (2) Any amendment to an inter-
35 U.S.C. 111 or 363, or the previously national application pursuant to para-
filed application is a foreign priority graph (b)(1) of this section shall be ef-
application and the conditions set fective only as to the United States,
forth in § 1.55(i) are satisfied with re- and shall have no effect on the inter-
spect to such foreign priority applica- national filing date of the application.
tion. The certified copy of the pre- In addition, no request under this sec-
viously filed application, if required by tion to add the inadvertently omitted
this paragraph, must be filed within portion of the specification or drawings
the later of four months from the filing in an international application desig-
date of the application or sixteen nating the United States will be acted
months from the filing date of the pre- upon by the Office prior to the entry
68
and commencement of the national (2) Describe the claimed invention in

stage (§ 1.491) or the filing of an appli- terms that particularly point out and
cation under 35 U.S.C. 111(a) which distinctly claim the invention as re-
claims benefit of the international ap- quired by 35 U.S.C. 112(b); or
plication. Any omitted portion of the (3) Describe the structure, material,
international application which appli- or acts that correspond to a claimed
cant desires to be effective as to all means or step for performing a speci-
designated States, subject to PCT Rule fied function as required by 35 U.S.C.
20.8(b), must be submitted in accord- 112(f).
ance with PCT Rule 20. (e) Other material (‘‘Nonessential
(3) If an application is not otherwise material’’) may be incorporated by ref-
entitled to a filing date under § 1.53(b), erence to U.S. patents, U.S. patent ap-
the amendment must be by way of a plication publications, foreign patents,
petition pursuant to § 1.53(e) accom- foreign published applications, prior
panied by the fee set forth in § 1.17(f). and concurrently filed commonly
(4) Any amendment to an inter- owned U.S. applications, or non-patent
national design application pursuant to publications. An incorporation by ref-
paragraph (b)(1) of this section shall be erence by hyperlink or other form of
effective only as to the United States browser executable code is not per-
and shall have no effect on the filing mitted.
date of the application. In addition, no (f) The examiner may require the ap-
request under this section to add the plicant to supply a copy of the mate-
inadvertently omitted portion of the rial incorporated by reference. If the
specification or drawings in an inter- Office requires the applicant to supply
national design application will be a copy of material incorporated by ref-
acted upon by the Office prior to the erence, the material must be accom-
international design application be- panied by a statement that the copy
coming a nonprovisional application. supplied consists of the same material
(c) Except as provided in paragraph incorporated by reference in the ref-
(a) or (b) of this section, an incorpora- erencing application.
tion by reference must be set forth in (g) Any insertion of material incor-
the specification and must: porated by reference into the specifica-
(1) Express a clear intent to incor- tion or drawings of an application must
porate by reference by using the root be by way of an amendment to the
words ‘‘incorporat(e)’’ and ‘‘reference’’ specification or drawings. Such an
(e.g., ‘‘incorporate by reference’’); and amendment must be accompanied by a
(2) Clearly identify the referenced statement that the material being in-
patent, application, or publication. serted is the material previously incor-
(d) ‘‘Essential material’’ may be in- porated by reference and that the
corporated by reference, but only by amendment contains no new matter.
way of an incorporation by reference to (h) An incorporation of material by
a U.S. patent or U.S. patent applica- reference that does not comply with
tion publication, which patent or pat- paragraphs (c), (d), or (e) of this section
ent application publication does not is not effective to incorporate such ma-
itself incorporate such essential mate- terial unless corrected within any time
rial by reference. ‘‘Essential material’’ period set by the Office, but in no case
is material that is necessary to: later than the close of prosecution as
(1) Provide a written description of defined by § 1.114(b), or abandonment of
the claimed invention, and of the man- the application, whichever occurs ear-
ner and process of making and using it, lier. In addition:
in such full, clear, concise, and exact (1) A correction to comply with para-
terms as to enable any person skilled graph (c)(1) of this section is permitted
in the art to which it pertains, or with only if the application as filed clearly
which it is most nearly connected, to conveys an intent to incorporate the
make and use the same, and set forth material by reference. A mere ref-
the best mode contemplated by the in- erence to material does not convey an
ventor of carrying out the invention as intent to incorporate the material by

required by 35 U.S.C. 112(a); reference.
69
§ 1.58 37 CFR Ch. I (7–1–16 Edition)
(2) A correction to comply with para- tween complex formulae and tables and
graph (c)(2) of this section is only per- the text. Tables should have the lines
mitted for material that was suffi- and columns of data closely spaced to
ciently described to uniquely identify conserve space, consistent with a high
the document. degree of legibility.
(i) An application transmittal letter
[69 FR 56540, Sept. 21, 2004, as amended at 78
limited to the transmittal of a copy of FR 62401, Oct. 21, 2013]
the specification and drawings from a
previously filed application submitted § 1.59 Expungement of information or
under paragraph (a) or (b) of this sec- copy of papers in application file.
tion may be signed by a juristic appli- (a) (1) Information in an application
cant or patent owner. will not be expunged, except as pro-
[78 FR 62401, Oct. 21, 2013, as amended at 80 vided in paragraph (b) of this section or
FR 17959, Apr. 2, 2015] § 41.7(a) or § 42.7(a) of this title.
(2) Information forming part of the
§ 1.58 Chemical and mathematical for- original disclosure (i.e., written speci-
mulae and tables.
fication including the claims, draw-
(a) The specification, including the ings, and any preliminary amendment
claims, may contain chemical and present on the filing date of the appli-
mathematical formulae, but shall not cation) will not be expunged from the
contain drawings or flow diagrams. The application file.
description portion of the specification (b) An applicant may request that
may contain tables, but the same ta- the Office expunge information, other
bles should not be included in both the than what is excluded by paragraph
drawings and description portion of the (a)(2) of this section, by filing a peti-
specification. Claims may contain tation under this paragraph. Any peti-
bles either if necessary to conform to tion to expunge information from an
35 U.S.C. 112 or if otherwise found to be application must include the fee set
desirable. forth in § 1.17(g) and establish to the
(b) Tables that are submitted in elec- satisfaction of the Director that the
tronic form (§§ 1.96(c) and 1.821(c)) must expungement of the information is ap-
maintain the spatial relationships propriate in which case a notice grant-
(e.g., alignment of columns and rows) ing the petition for expungement will
of the table elements when displayed so be provided.
as to visually preserve the relational (c) Upon request by an applicant and
information they convey. Chemical and payment of the fee specified in § 1.19(b),
mathematical formulae must be en- the Office will furnish copies of an ap-
coded to maintain the proper posi- plication, unless the application has
tioning of their characters when dis- been disposed of (see §§ 1.53(e), (f) and
played in order to preserve their in- (g)). The Office cannot provide or cer-
tended meaning. tify copies of an application that has
(c) Chemical and mathematical for- been disposed of.
mulae and tables must be presented in
compliance with § 1.52(a) and (b), except [68 FR 38628, June 30, 2003, as amended at 69
FR 49999, Aug. 12, 2004; 69 FR 56540, Sept. 21,
that chemical and mathematical for-
2004; 77 FR 46624, Aug. 6, 2012; 77 FR 48818,
mulae or tables may be placed in a Aug. 14, 2012]
landscape orientation if they cannot be
presented satisfactorily in a portrait §§ 1.60–1.62 [Reserved]
orientation. Typewritten characters
used in such formulae and tables must OATH OR DECLARATION
be chosen from a block (nonscript) type
font or lettering style having capital § 1.63 Inventor’s oath or declaration.
letters which should be at least 0.422 (a) The inventor, or each individual
cm. (0.166 inch) high (e.g., preferably who is a joint inventor of a claimed in-
Arial, Times Roman, or Courier with a vention, in an application for patent
font size of 12), but may be no smaller must execute an oath or declaration di-
than 0.21 cm. (0.08 inch) high (e.g., a rected to the application, except as
font size of 6). A space at least 0.64 cm. provided for in § 1.64. An oath or dec-
(1/4 inch) high should be provided be- laration under this section must:
70
(1) Identify the inventor or joint ining the signature or an indication
ventor executing the oath or declara- thereon that it was executed, is sub-
tion by his or her legal name; mitted in the continuing application.
(2) Identify the application to which (2) The inventorship of a continuing
it is directed; application filed under 35 U.S.C. 111(a)
(3) Include a statement that the per- is the inventor or joint inventors speci-
son executing the oath or declaration fied in the application data sheet filed
believes the named inventor or joint before or concurrently with the copy of
inventor to be the original inventor or the inventor’s oath or declaration from
an original joint inventor of a claimed the earlier-filed application. If an ap-
invention in the application for which plication data sheet is not filed before
the oath or declaration is being sub- or concurrently with the copy of the
mitted; and inventor’s oath or declaration from the
(4) State that the application was earlier-filed application, the
made or was authorized to be made by inventorship is the inventorship set
the person executing the oath or dec- forth in the copy of the inventor’s oath
laration. or declaration from the earlier-filed ap-
(b) Unless the following information plication, unless it is accompanied by a
is supplied in an application data sheet statement signed pursuant to § 1.33(b)
in accordance with § 1.76, the oath or stating the name of each inventor in
declaration must also identify: the continuing application.
(1) Each inventor by his or her legal (3) Any new joint inventor named in
name; and the continuing application must pro-
(2) A mailing address where the in- vide an oath or declaration in compli-
ventor customarily receives mail, and ance with this section, except as pro-
residence, if an inventor lives at a loca- vided for in § 1.64.
tion which is different from where the (e)(1) An assignment may also serve
inventor customarily receives mail, for as an oath or declaration required by
each inventor. this section if the assignment as exe-
(c) A person may not execute an oath cuted:
or declaration for an application unless (i) Includes the information and
that person has reviewed and under- statements required under paragraphs
stands the contents of the application, (a) and (b) of this section; and
including the claims, and is aware of (ii) A copy of the assignment is re-
the duty to disclose to the Office all in- corded as provided for in part 3 of this
formation known to the person to be chapter.
material to patentability as defined in (2) Any reference to an oath or dec-
§ 1.56. There is no minimum age for a laration under this section includes an
person to be qualified to execute an assignment as provided for in this
oath or declaration, but the person paragraph.
must be competent to execute, i.e., un- (f) With respect to an application
derstand, the document that the person naming only one inventor, any ref-
is executing. erence to the inventor’s oath or dec-
(d)(1) A newly executed oath or declaration in this chapter includes a sub-
laration under § 1.63, or substitute stitute statement executed under § 1.64.
statement under § 1.64, is not required With respect to an application naming
under §§ 1.51(b)(2) and 1.53(f), or under more than one inventor, any reference
§§ 1.497 and 1.1021(d), for an inventor in to the inventor’s oath or declaration in
a continuing application that claims this chapter means the oaths, declara-
the benefit under 35 U.S.C. 120, 121, tions, or substitute statements that
365(c), or 386(c) in compliance with have been collectively executed by or
§ 1.78 of an earlier-filed application, with respect to all of the joint inven-
provided that an oath or declaration in tors, unless otherwise clear from the
compliance with this section, or sub- context.
stitute statement under § 1.64, was exe- (g) An oath or declaration under this
cuted by or with respect to such inven- section, including the statement pro-
tor and was filed in the earlier-filed ap- vided for in paragraph (e) of this sec-
plication, and a copy of such oath, dec- tion, must be executed (i.e., signed) in
laration, or substitute statement show- accordance either with § 1.66 or with an
71
§ 1.64 37 CFR Ch. I (7–1–16 Edition)
acknowledgment that any willful false (i) Each inventor by his or her legal
statement made in such declaration or name; and
statement is punishable under 18 U.S.C. (ii) The last known mailing address
1001 by fine or imprisonment of not where the inventor customarily re-
more than five (5) years, or both. ceives mail, and last known residence,
(h) An oath or declaration filed at if an inventor lives at a location which
any time pursuant to 35 U.S.C. 115(h)(1) is different from where the inventor
will be placed in the file record of the customarily receives mail, for each in-
application or patent, but may not nec- ventor who is not deceased or under a
essarily be reviewed by the Office. Any legal incapacity.
request for correction of the named (c) A person may not execute a sub-
inventorship must comply with § 1.48 in stitute statement provided for in this
an application and § 1.324 in a patent. section for an application unless that
person has reviewed and understands
[77 FR 48818, Aug. 14, 2012, as amended at 80 the contents of the application, includ-
FR 17959, Apr. 2, 2015] ing the claims, and is aware of the duty
to disclose to the Office all information
§ 1.64 Substitute statement in lieu of
an oath or declaration. known to the person to be material to
patentability as defined in § 1.56.
(a) An applicant under § 1.43, 1.45 or (d) Any reference to an inventor’s
1.46 may execute a substitute state- oath or declaration includes a sub-
ment in lieu of an oath or declaration stitute statement provided for in this
under § 1.63 if the inventor is deceased, section.
is under a legal incapacity, has refused (e) A substitute statement under this
to execute the oath or declaration section must contain an acknowledg-
under § 1.63, or cannot be found or ment that any willful false statement
reached after diligent effort. made in such statement is punishable
(b) A substitute statement under this under section 1001 of title 18 by fine or
section must: imprisonment of not more than 5
(1) Comply with the requirements of years, or both.
§ 1.63(a), identifying the inventor or (f) A nonsigning inventor or legal
joint inventor with respect to whom a representative may subsequently join
substitute statement in lieu of an oath in the application by submitting an
or declaration is executed, and stating oath or declaration under § 1.63. The
upon information and belief the facts submission of an oath or declaration by
which such inventor is required to a nonsigning inventor or legal rep-
state; resentative in an application filed
(2) Identify the person executing the under § 1.43, 1.45 or 1.46 will not permit
substitute statement and the relation- the nonsigning inventor or legal rep-
ship of such person to the inventor or resentative to revoke or grant a power
joint inventor with respect to whom of attorney.
the substitute statement is executed, [77 FR 48819, Aug. 14, 2012]
and unless such information is supplied
in an application data sheet in accord- § 1.66 Statements under oath.
ance with § 1.76, the residence and mail- An oath or affirmation may be made
ing address of the person signing the before any person within the United
substitute statement; States authorized by law to administer
(3) Identify the circumstances per- oaths. An oath made in a foreign coun-
mitting the person to execute the sub- try may be made before any diplomatic
stitute statement in lieu of an oath or or consular officer of the United States
declaration under § 1.63, namely wheth- authorized to administer oaths, or be-
er the inventor is deceased, is under a fore any officer having an official seal
legal incapacity, cannot be found or and authorized to administer oaths in
reached after a diligent effort was the foreign country in which the appli-
made, or has refused to execute the cant may be, whose authority shall be
oath or declaration under § 1.63; and proved by a certificate of a diplomatic
(4) Unless the following information or consular officer of the United
is supplied in an application data sheet States, or by an apostille of an official

in accordance with § 1.76, also identify: designated by a foreign country which,
72
by treaty or convention, accords like required by any law, rule, or other reg-
effect to apostilles of designated offi- ulation to be under oath may be sub-
cials in the United States. The oath scribed to by a written declaration.
shall be attested in all cases in this and Such declaration may be used in lieu of
other countries, by the proper official the oath otherwise required, if, and
seal of the officer before whom the only if, the declarant is on the same
oath or affirmation is made. Such oath document, warned that willful false
or affirmation shall be valid as to exe- statements and the like are punishable
cution if it complies with the laws of by fine or imprisonment, or both (18
the State or country where made. U.S.C. 1001) and may jeopardize the va-
When the person before whom the oath lidity of the application or any patent
or affirmation is made in this country issuing thereon. The declarant must
is not provided with a seal, his official set forth in the body of the declaration
character shall be established by com- that all statements made of the declar-
petent evidence, as by a certificate ant’s own knowledge are true and that
from a clerk of a court of record or all statements made on information
other proper officer having a seal. and belief are believed to be true.
[77 FR 48819, Aug. 14, 2012] [49 FR 48452, Dec. 12, 1984]
§ 1.67 Supplemental oath or declara- § 1.69 Foreign language oaths and dec-
tion. larations.
(a) The applicant may submit an in- (a) Whenever an individual making
ventor’s oath or declaration meeting an oath or declaration cannot under-
the requirements of § 1.63, § 1.64, or stand English, the oath or declaration
§ 1.162 to correct any deficiencies or in- must be in a language that such indi-
accuracies present in an earlier-filed vidual can understand and shall state
inventor’s oath or declaration. Defi- that such individual understands the
ciencies or inaccuracies due to the fail- content of any documents to which the
ure to meet the requirements of oath or declaration relates.
§ 1.63(b) in an oath or declaration may (b) Unless the text of any oath or
be corrected with an application data declaration in a language other than
sheet in accordance with § 1.76, except English is in a form provided by the
that any correction of inventorship Patent and Trademark Office or in ac-
must be pursuant to § 1.48. cordance with PCT Rule 4.17(iv), it
(b) A supplemental inventor’s oath or must be accompanied by an English
declaration under this section must be translation together with a statement
executed by the person whose inven- that the translation is accurate, except
tor’s oath or declaration is being with- that in the case of an oath or declara-
drawn, replaced, or otherwise cor- tion filed under § 1.63, the translation
rected. may be filed in the Office no later than
(c) The Office will not require a per- two months from the date applicant is
son who has executed an oath or dec- notified to file the translation.
laration in compliance with 35 U.S.C. (35 U.S.C. 6, Pub. L. 97–247)
115 and § 1.63 or 1.162 for an application
to provide an additional inventor’s
FR 2711, Jan. 20, 1983; 62 FR 53189, Oct. 10,
oath or declaration for the application. 1997; 69 FR 56540, Sept. 21, 2004; 70 FR 3890,
(d) No new matter may be introduced Jan. 27, 2005]
into a nonprovisional application after
its filing date even if an inventor’s § 1.70 [Reserved]
oath or declaration is filed to correct
deficiencies or inaccuracies present in SPECIFICATION
the earlier-filed inventor’s oath or dec-
laration. AUTHORITY: Secs. 1.71 to 1.79 also issued
under 35 U.S.C. 112.
[77 FR 48819, Aug. 14, 2012]
§ 1.71 Detailed description and speci-
§ 1.68 Declaration in lieu of oath. fication of the invention.
Any document to be filed in the Pat- (a) The specification must include a
ent and Trademark Office and which is written description of the invention or
73
§ 1.71 37 CFR Ch. I (7–1–16 Edition)
discovery and of the manner and proc- to (copyright or mask work) protection. The
ess of making and using the same, and (copyright or mask work) owner has no ob-
is required to be in such full, clear, jection to the facsimile reproduction by any-
concise, and exact terms as to enable one of the patent document or the patent
any person skilled in the art or science disclosure, as it appears in the Patent and
Trademark Office patent file or records, but
to which the invention or discovery ap-
otherwise reserves all (copyright or mask
pertains, or with which it is most near-
work) rights whatsoever.
ly connected, to make and use the
same. (f) The specification must commence
(b) The specification must set forth on a separate sheet. Each sheet includ-
the precise invention for which a pating part of the specification may not
ent is solicited, in such manner as to include other parts of the application
distinguish it from other inventions or other information. The claim(s), ab-
and from what is old. It must describe stract and sequence listing (if any)
completely a specific embodiment of should not be included on a sheet in-
the process, machine, manufacture, cluding any other part of the applica-
composition of matter or improvement tion.
invented, and must explain the mode of
(g)(1) The specification may disclose
operation or principle whenever appli-
cable. The best mode contemplated by or be amended to disclose the names of
the inventor of carrying out his inven- the parties to a joint research agree-
tion must be set forth. ment as defined in § 1.9(e).
(c) In the case of an improvement, (2) An amendment under paragraph
the specification must particularly (g)(1) of this section must be accom-
point out the part or parts of the proc- panied by the processing fee set forth
ess, machine, manufacture, or composi- in § 1.17(i) if not filed within one of the
tion of matter to which the improve- following time periods:
ment relates, and the description (i) Within three months of the filing
should be confined to the specific im- date of a national application;
provement and to such parts as nec- (ii) Within three months of the date
essarily cooperate with it or as may be of entry of the national stage as set
necessary to a complete understanding forth in § 1.491 in an international ap-
or description of it. plication;
(d) A copyright or mask work notice (iii) Before the mailing of a first Of-
may be placed in a design or utility fice action on the merits; or
patent application adjacent to copy-
(iv) Before the mailing of a first Of-
right and mask work material con-
fice action after the filing of a request
tained therein. The notice may appear
for continued examination under
at any appropriate portion of the pat-
§ 1.114.
ent application disclosure. For notices
in drawings, see § 1.84(s). The content of (3) If an amendment under paragraph
the notice must be limited to only (g)(1) of this section is filed after the
those elements provided for by law. For date the issue fee is paid, the patent as
example, ‘‘© 1983 John Doe’’ (17 U.S.C. issued may not necessarily include the
401) and ‘‘ *M* John Doe’’ (17 U.S.C. 909) names of the parties to the joint re-
would be properly limited and, under search agreement. If the patent as
current statutes, legally sufficient no- issued does not include the names of
tices of copyright and mask work, re- the parties to the joint research agree-
spectively. Inclusion of a copyright or ment, the patent must be corrected to
mask work notice will be permitted include the names of the parties to the
only if the authorization language set joint research agreement by a certifi-
forth in paragraph (e) of this section is cate of correction under 35 U.S.C. 255
included at the beginning (preferably and § 1.323 for the amendment to be ef-
as the first paragraph) of the specifica- fective.
tion.
(e) The authorization shall read as [24 FR 10332, Dec. 22, 1959, as amended at 53
FR 47808, Nov. 28, 1988; 58 FR 38723, July 20,
follows:
1993; 68 FR 38628, June 30, 2003; 70 FR 1823,

A portion of the disclosure of this patent Jan. 11, 2005; 70 FR 54266, Sept. 14, 2005; 78 FR
document contains material which is subject 11055, Feb. 14, 2013]
74
§ 1.72 Title and abstract. and distinctly claiming the subject

(a) The title of the invention may not matter which the applicant regards as
exceed 500 characters in length and his invention or discovery.
must be as short and specific as pos- (b) More than one claim may be pre-
sible. Characters that cannot be cap- sented provided they differ substan-
tured and recorded in the Office’s auto- tially from each other and are not un-
mated information systems may not be duly multiplied.
reflected in the Office’s records in such (c) One or more claims may be pre-
systems or in documents created by sented in dependent form, referring
the Office. Unless the title is supplied back to and further limiting another
in an application data sheet (§ 1.76), the claim or claims in the same applica-
title of the invention should appear as tion. Any dependent claim which refers
a heading on the first page of the speci- to more than one other claim (‘‘mul-
fication. tiple dependent claim’’) shall refer to
(b) A brief abstract of the technical such other claims in the alternative
disclosure in the specification must only. A multiple dependent claim shall
commence on a separate sheet, pref- not serve as a basis for any other mul-
erably following the claims, under the tiple dependent claim. For fee calcula-
heading ‘‘Abstract’’ or ‘‘Abstract of the tion purposes under § 1.16, a multiple
Disclosure.’’ The sheet or sheets pre- dependent claim will be considered to
senting the abstract may not include be that number of claims to which di-
other parts of the application or other rect reference is made therein. For fee
material. The abstract must be as con- calculation purposes also, any claim
cise as the disclosure permits, pref- depending from a multiple dependent
erably not exceeding 150 words in claim will be considered to be that
length. The purpose of the abstract is number of claims to which direct ref-
to enable the Office and the public gen- erence is made in that multiple de-
erally to determine quickly from a cur- pendent claim. In addition to the other
sory inspection the nature and gist of filing fees, any original application
the technical disclosure. which is filed with, or is amended to in-
clude, multiple dependent claims must
FR 57054, Sept. 20, 2000; 68 FR 38628, June 30, have paid therein the fee set forth in
2003; 78 FR 62402, Oct. 21, 2013] § 1.16(j). Claims in dependent form shall
be construed to include all the limita-
§ 1.73 Summary of the invention. tions of the claim incorporated by ref-
A brief summary of the invention in- erence into the dependent claim. A
dicating its nature and substance, multiple dependent claim shall be con-
which may include a statement of the strued to incorporate by reference all
object of the invention, should precede the limitations of each of the par-
the detailed description. Such sum- ticular claims in relation to which it is
mary should, when set forth, be com- being considered.
mensurate with the invention as (d)(1) The claim or claims must con-
claimed and any object recited should form to the invention as set forth in
be that of the invention as claimed. the remainder of the specification and
the terms and phrases used in the
§ 1.74 Reference to drawings. claims must find clear support or ante-
When there are drawings, there shall cedent basis in the description so that
be a brief description of the several the meaning of the terms in the claims
views of the drawings and the detailed may be ascertainable by reference to
description of the invention shall refer the description. (See § 1.58(a).)
to the different views by specifying the (2) See §§ 1.141 to 1.146 as to claiming
numbers of the figures and to the dif- different inventions in one application.
ferent parts by use of reference letters (e) Where the nature of the case ad-
or numerals (preferably the latter). mits, as in the case of an improvement,
any independent claim should contain
§ 1.75 Claim(s). in the following order:
(a) The specification must conclude (1) A preamble comprising a general

with a claim particularly pointing out description of all the elements or steps
75
§ 1.76 37 CFR Ch. I (7–1–16 Edition)
of the claimed combination which are data sheet is part of the application for
conventional or known, which it has been submitted.
(2) A phrase such as ‘‘wherein the im- (b) Bibliographic data. Bibliographic
provement comprises,’’ and data as used in paragraph (a) of this
(3) Those elements, steps and/or rela- section includes:
tionships which constitute that portion (1) Inventor information. This informa-
of the claimed combination which the tion includes the legal name, residence,
applicant considers as the new or im- and mailing address of the inventor or
proved portion. each joint inventor.
(f) If there are several claims, they (2) Correspondence information. This
shall be numbered consecutively in Ar- information includes the correspond-
abic numerals. ence address, which may be indicated
(g) The least restrictive claim should by reference to a customer number, to
be presented as claim number 1, and all which correspondence is to be directed
dependent claims should be grouped to- (see § 1.33(a)).
gether with the claim or claims to (3) Application information. This infor-
which they refer to the extent prac- mation includes the title of the inven-
ticable. tion, the total number of drawing
(h) The claim or claims must com- sheets, a suggested drawing figure for
mence on a separate physical sheet or publication (in a nonprovisional appli-
electronic page. Any sheet including a cation), any docket number assigned to
claim or portion of a claim may not the application, the type of application
contain any other parts of the applica- (e.g., utility, plant, design, reissue, pro-
tion or other material. visional), whether the application dis-
(i) Where a claim sets forth a plu- closes any significant part of the sub-
rality of elements or steps, each ele- ject matter of an application under a
ment or step of the claim should be secrecy order pursuant to § 5.2 of this
separated by a line indentation. chapter (see § 5.2(c)), and, for plant ap-
plications, the Latin name of the genus
(35 U.S.C. 6; 15 U.S.C. 1113, 1126) and species of the plant claimed, as
[31 FR 12922, Oct. 4, 1966, as amended at 36 FR well as the variety denomination.
12690, July 3, 1971; 37 FR 21995, Oct. 18, 1972; When information concerning the pre-
43 FR 4015, Jan. 31, 1978; 47 FR 41276, Sept. 17, viously filed application is required
1982; 61 FR 42803, Aug. 19, 1996; 68 FR 38628, under § 1.57(a), application information
June 30, 2003; 70 FR 3891, Jan. 27, 2005; 72 FR also includes the reference to the pre-
46836, Aug. 21, 2007; 74 FR 52688, Oct. 14, 2009] viously filed application, indicating
that the specification and any draw-
§ 1.76 Application data sheet. ings of the application are replaced by
(a) Application data sheet. An applica- the reference to the previously filed ap-
tion data sheet is a sheet or sheets that plication, and specifying the previously
may be submitted in a provisional ap- filed application by application num-
plication under 35 U.S.C. 111(b), a non- ber, filing date, and the intellectual
provisional application under 35 U.S.C. property authority or country in which
111(a), a nonprovisional international the previously filed application was
design application, or a national stage filed.
application under 35 U.S.C. 371 and (4) Representative information. This in-
must be submitted when required by formation includes the registration
§ 1.55 or 1.78 to claim priority to or the number of each practitioner having a
benefit of a prior-filed application power of attorney in the application
under 35 U.S.C. 119, 120, 121, 365, or 386. (preferably by reference to a customer
An application data sheet must be ti- number). Providing this information in
tled ‘‘Application Data Sheet.’’ An ap- the application data sheet does not
plication data sheet must contain all of constitute a power of attorney in the
the section headings listed in para- application (see § 1.32).
graph (b) of this section, except as pro- (5) Domestic benefit information. This
vided in paragraph (c)(2) of this sec- information includes the application
tion, with any appropriate data for number, the filing date, the status (in-
each section heading. If an application cluding patent number if available),

data sheet is provided, the application and relationship of each application for
76
which a benefit is claimed under 35 except that identification of informa-

U.S.C. 119(e), 120, 121, 365(c), or 386(c). tion being changed is not required for
Providing this information in the ap- an application data sheet included with
plication data sheet constitutes the an initial submission under 35 U.S.C.
specific reference required by 35 U.S.C. 371.
119(e) or 120 and § 1.78. (d) Inconsistencies between application
(6) Foreign priority information. This data sheet and other documents. For in-
information includes the application consistencies between information that
number, country (or intellectual prop- is supplied by both an application data
erty authority), and filing date of each sheet under this section and other doc-
foreign application for which priority uments:
is claimed. Providing this information
(1) The most recent submission will
in the application data sheet con-
govern with respect to inconsistencies
stitutes the claim for priority as re-
as between the information provided in
quired by 35 U.S.C. 119(b) and § 1.55.
(7) Applicant information: This infor- an application data sheet, a designa-
mation includes the name (either nat- tion of a correspondence address, or by
ural person or juristic entity) and ad- the inventor’s oath or declaration, ex-
dress of the legal representative, as- cept that:
signee, person to whom the inventor is (i) The most recent application data
under an obligation to assign the in- sheet will govern with respect to for-
vention, or person who otherwise shows eign priority (§ 1.55) or domestic benefit
sufficient proprietary interest in the (§ 1.78) claims; and
matter who is the applicant under § 1.43 (ii) The naming of the inventorship is
or § 1.46. Providing assignment infor- governed by § 1.41 and changes to
mation in the application data sheet inventorship or the names of the inven-
does not substitute for compliance tors is governed by § 1.48.
with any requirement of part 3 of this (2) The information in the applica-
chapter to have an assignment re- tion data sheet will govern when incon-
corded by the Office. sistent with the information supplied
(c) Correcting and updating an applica- at the same time by a designation of
tion data sheet. (1) Information in a pre- correspondence address or the inven-
viously submitted application data tor’s oath or declaration. The informa-
sheet, inventor’s oath or declaration tion in the application data sheet will
under § 1.63, § 1.64 or § 1.67, or otherwise govern when inconsistent with the in-
of record, may be corrected or updated formation supplied at any time in a
until payment of the issue fee by a new
Patent Cooperation Treaty Request
application data sheet providing cor-
Form, Patent Law Treaty Model Inter-
rected or updated information, except
national Request Form, Patent Law
that inventorship changes must com-
Treaty Model International Request
ply with the requirements of § 1.48, for-
eign priority and domestic benefit infor Recordation of Change in Name or
formation changes must comply with Address Form, or Patent Law Treaty
§§ 1.55 and 1.78, and correspondence ad- Model International Request for Rec-
dress changes are governed by § 1.33(a). ordation of Change in Applicant or
(2) An application data sheet pro- Owner Form.
viding corrected or updated informa- (3) The Office will capture biblio-
tion may include all of the sections graphic information from the applica-
listed in paragraph (b) of this section tion data sheet. The Office will gen-
or only those sections containing erally not review the inventor’s oath or
changed or updated information. The declaration to determine if the biblio-
application data sheet must include graphic information contained therein
the section headings listed in para- is consistent with the bibliographic in-
graph (b) of this section for each sec- formation provided in an application
tion included in the application data data sheet. Incorrect bibliographic in-
sheet, and must identify the informa- formation contained in an application
tion that is being changed, with under- data sheet may be corrected as pro-
lining for insertions, and strike- vided in paragraph (c)(1) of this sec-
through or brackets for text removed, tion.
77
§ 1.77 37 CFR Ch. I (7–1–16 Edition)
(e) Signature requirement. An applica- Treaty Request Form. If a Patent Co-

tion data sheet must be signed in com- operation Treaty Request Form is sub-
pliance with § 1.33(b). An unsigned ap- mitted in an application under 35
plication data sheet will be treated U.S.C. 111, the Patent Cooperation
only as a transmittal letter. Treaty Request Form must be accom-
(f) Patent Law Treaty Model Inter- panied by a clear indication that treat-
national Forms. The requirement in ment of the application as an applica-
§ 1.55 or § 1.78 for the presentation of a tion under 35 U.S.C. 111 is desired.
priority or benefit claim under 35 [65 FR 54668, Sept. 8, 2000, as amended at 65
U.S.C. 119, 120, 121, or 365 in an applica- FR 57054, Sept. 20, 2000; 69 FR 56540, Sept. 21,
tion data sheet will be satisfied by the 2004; 70 FR 54266, Sept. 14, 2005;; 72 FR 46837,
presentation of such priority or benefit Aug. 21, 2007; 74 FR 52689, Oct. 14, 2009; 77 FR
claim in the Patent Law Treaty Model 48820, Aug. 14, 2012; 78 FR 11055, Feb. 14, 2013;
International Request Form, and the 78 FR 62402, Oct. 21, 2013; 80 FR 17959, Apr. 2,
requirement in § 1.57(a) for a reference 2015]
to the previously filed application in § 1.77 Arrangement of application ele-
an application data sheet will be satis- ments.
fied by the presentation of such ref-
(a) The elements of the application,
erence to the previously filed applica-
if applicable, should appear in the fol-
tion in the Patent Law Treaty Model
lowing order:
International Request Form. The re-
(1) Utility application transmittal
quirement in § 1.46 for the presentation
form.
of the name of the applicant under 35
(2) Fee transmittal form.
U.S.C. 118 in an application data sheet
(3) Application data sheet (see § 1.76).
will be satisfied by the presentation of (4) Specification.
the name of the applicant in the Pat- (5) Drawings.
ent Law Treaty Model International (6) The inventor’s oath or declara-
Request Form, Patent Law Treaty tion.
Model International Request for Rec- (b) The specification should include
ordation of Change in Name or Address the following sections in order:
Form, or Patent Law Treaty Model (1) Title of the invention, which may
International Request for Recordation be accompanied by an introductory
of Change in Applicant or Owner Form, portion stating the name, citizenship,
as applicable. and residence of the applicant (unless
(g) Patent Cooperation Treaty Request included in the application data sheet).
Form. The requirement in § 1.78 for the (2) Cross-reference to related applica-
presentation of a benefit claim under 35 tions.
U.S.C. 119, 120, 121, or 365 in an applica- (3) Statement regarding federally
tion data sheet will be satisfied in a na- sponsored research or development.
tional stage application under 35 U.S.C. (4) The names of the parties to a
371 by the presentation of such benefit joint research agreement.
claim in the Patent Cooperation Trea- (5) Reference to a ‘‘Sequence List-
ty Request Form contained in the ing,’’ a table, or a computer program
international application or the pres- listing appendix submitted on a com-
ence of such benefit claim on the front pact disc and an incorporation-by-ref-
page of the publication of the inter- erence of the material on the compact
national application under PCT Article disc (see § 1.52(e)(5)). The total number
21(2). The requirement in § 1.55 or § 1.78 of compact discs including duplicates
for the presentation of a priority or and the files on each compact disc shall
benefit claim under 35 U.S.C. 119, 120, be specified.
121, or 365 in an application data sheet (6) Statement regarding prior disclo-
and the requirement in § 1.46 for the sures by the inventor or a joint inven-
presentation of the name of the appli- tor.
cant under 35 U.S.C. 118 in an applica- (7) Background of the invention.
tion data sheet will be satisfied in an (8) Brief summary of the invention.
application under 35 U.S.C. 111 by the (9) Brief description of the several
presentation of such priority or benefit views of the drawing.
claim and presentation of the name of (10) Detailed description of the inven-
the applicant in a Patent Cooperation tion.
78
(11) A claim or claims. sional application number (consisting

(12) Abstract of the disclosure. of series code and serial number). If the
(13) ‘‘Sequence Listing,’’ if on paper later-filed application is a nonprovi-
(see §§ 1.821 through 1.825). sional application, the reference re-
(c) The text of the specification sec- quired by this paragraph must be in-
tions defined in paragraphs (b)(1) cluded in an application data sheet
through (b)(12) of this section, if appli- (§ 1.76(b)(5)).
cable, should be preceded by a section (4) The reference required by para-
heading in uppercase and without un- graph (a)(3) of this section must be sub-
derlining or bold type. mitted during the pendency of the
later-filed application. If the later-filed
FR 1823, Jan. 11, 2005; 77 FR 48820, Aug. 14, application is an application filed
2012; 78 FR 11055, Feb. 14, 2013] under 35 U.S.C. 111(a), this reference
must also be submitted within the
§ 1.78 Claiming benefit of earlier filing later of four months from the actual
date and cross-references to other filing date of the later-filed application
applications. or sixteen months from the filing date
(a) Claims under 35 U.S.C. 119(e) for the of the prior-filed provisional applica-
benefit of a prior-filed provisional appli- tion. If the later-filed application is a
cation. An applicant in a nonprovi- nonprovisional application entering
sional application, other than for a de- the national stage from an inter-
sign patent, or an international appli- national application under 35 U.S.C.
cation designating the United States 371, this reference must also be sub-
may claim the benefit of one or more mitted within the later of four months
prior-filed provisional applications from the date on which the national
under the conditions set forth in 35 stage commenced under 35 U.S.C. 371(b)
U.S.C. 119(e) and this section. or (f) (§ 1.491(a)), four months from the
(1) The nonprovisional application or date of the initial submission under 35
international application designating U.S.C. 371 to enter the national stage,
the United States must be: or sixteen months from the filing date
(i) Filed not later than twelve of the prior-filed provisional applica-
months after the date on which the tion. Except as provided in paragraph
provisional application was filed, sub- (c) of this section, failure to timely
ject to paragraph (b) of this section (a submit the reference is considered a
subsequent application); or waiver of any benefit under 35 U.S.C.
(ii) Entitled to claim the benefit 119(e) of the prior-filed provisional ap-
under 35 U.S.C. 120, 121, or 365(c) of a plication. The time periods in this
subsequent application that was filed paragraph do not apply if the later-
within the period set forth in para- filed application is:
graph (a)(1)(i) of this section. (i) An application filed under 35
(2) Each prior-filed provisional appli- U.S.C. 111(a) before November 29, 2000;
cation must name the inventor or a or
joint inventor named in the later-filed (ii) An international application filed
application as the inventor or a joint under 35 U.S.C. 363 before November 29,
inventor. In addition, each prior-filed 2000.
provisional application must be enti- (5) If the prior-filed provisional appli-
tled to a filing date as set forth in cation was filed in a language other
§ 1.53(c), and the basic filing fee set than English and both an English-lan-
forth in § 1.16(d) must have been paid guage translation of the prior-filed pro-
for such provisional application within visional application and a statement
the time period set forth in § 1.53(g). that the translation is accurate were
(3) Any nonprovisional application or not previously filed in the prior-filed
international application designating provisional application, the applicant
the United States that claims the ben- will be notified and given a period of
efit of one or more prior-filed provi- time within which to file, in the prior-
sional applications must contain, or be filed provisional application, the trans-
amended to contain, a reference to lation and the statement. If the notice
each such prior-filed provisional appli- is mailed in a pending nonprovisional

cation, identifying it by the provi- application, a timely reply to such a
79
§ 1.78 37 CFR Ch. I (7–1–16 Edition)
notice must include the filing in the under PCT Rule 26bis.3 for an inter-
nonprovisional application of either a national application, or upon petition
confirmation that the translation and pursuant to this paragraph, if the delay
statement were filed in the provisional in filing the subsequent nonprovisional
application, or an application data application or international applica-
sheet (§ 1.76(b)(5)) eliminating the ref- tion designating the United States
erence under paragraph (a)(3) of this within the period set forth in para-
section to the prior-filed provisional graph (a)(1)(i) of this section was unin-
application, or the nonprovisional ap- tentional.
plication will be abandoned. The trans- (1) A petition to restore the benefit of
lation and statement may be filed in a provisional application under this
the provisional application, even if the paragraph filed on or after May 13, 2015,
provisional application has become must be filed in the subsequent appli-
abandoned. cation, and any petition to restore the
(6) If a nonprovisional application benefit of a provisional application
filed on or after March 16, 2013, claims under this paragraph must include:
the benefit of the filing date of a provi- (i) The reference required by 35
sional application filed prior to March U.S.C. 119(e) to the prior-filed provi-
16, 2013, and also contains, or contained sional application in an application
at any time, a claim to a claimed in- data sheet (§ 1.76(b)(5)) identifying it by
vention that has an effective filing provisional application number (con-
date as defined in § 1.109 that is on or sisting of series code and serial num-
after March 16, 2013, the applicant must ber), unless previously submitted;
provide a statement to that effect (ii) The petition fee as set forth in
within the later of four months from § 1.17(m); and
the actual filing date of the nonprovi- (iii) A statement that the delay in
sional application, four months from filing the subsequent nonprovisional
the date of entry into the national application or international applica-
stage as set forth in § 1.491 in an inter- tion designating the United States
national application, sixteen months within the twelve-month period set
from the filing date of the prior-filed forth in paragraph (a)(1)(i) of this sec-
provisional application, or the date tion was unintentional. The Director
that a first claim to a claimed inven- may require additional information
tion that has an effective filing date on where there is a question whether the
or after March 16, 2013, is presented in delay was unintentional.
the nonprovisional application. An ap- (2) The restoration of the right of pri-
plicant is not required to provide such ority under PCT Rule 26bis.3 to a provi-
a statement if the applicant reasonably sional application does not affect the
believes on the basis of information al- requirement to include the reference
ready known to the individuals des- required by paragraph (a)(3) of this sec-
ignated in § 1.56(c) that the nonprovi- tion to the provisional application in a
sional application does not, and did not national stage application under 35
at any time, contain a claim to a U.S.C. 371 within the time period pro-
claimed invention that has an effective vided by paragraph (a)(4) of this section
filing date on or after March 16, 2013. to avoid the benefit claim being consid-
(b) Delayed filing of the subsequent ered waived.
nonprovisional application or inter- (c) Delayed claims under 35 U.S.C.
national application designating the 119(e) for the benefit of a prior-filed provi-
United States. If the subsequent non- sional application. If the reference re-
provisional application or inter- quired by 35 U.S.C. 119(e) and para-
national application designating the graph (a)(3) of this section is presented
United States has a filing date which is in an application after the time period
after the expiration of the twelve- provided by paragraph (a)(4) of this sec-
month period set forth in paragraph tion, the claim under 35 U.S.C. 119(e)
(a)(1)(i) of this section but within two for the benefit of a prior-filed provi-
months from the expiration of the pe- sional application may be accepted if
riod set forth in paragraph (a)(1)(i) of the reference identifying the prior-filed
this section, the benefit of the provi- application by provisional application

sional application may be restored number was unintentionally delayed. A
80
petition to accept an unintentionally forth in § 1.16 has been paid within the
delayed claim under 35 U.S.C. 119(e) for pendency of the application.
the benefit of a prior-filed provisional (2) Except for a continued prosecu-
application must be accompanied by: tion application filed under § 1.53(d),
(1) The reference required by 35 any nonprovisional application, inter-
U.S.C. 119(e) and paragraph (a)(3) of national application designating the
this section to the prior-filed provi- United States, or international design
sional application, unless previously application designating the United
submitted; States that claims the benefit of one or
(2) The petition fee as set forth in more prior-filed nonprovisional appli-
§ 1.17(m); and cations, international applications des-
(3) A statement that the entire delay ignating the United States, or inter-
between the date the benefit claim was national design applications desig-
due under paragraph (a)(4) of this sec- nating the United States must contain
tion and the date the benefit claim was or be amended to contain a reference to
filed was unintentional. The Director each such prior-filed application, iden-
may require additional information tifying it by application number (con-
where there is a question whether the sisting of the series code and serial
delay was unintentional. number), international application
(d) Claims under 35 U.S.C. 120, 121, number and international filing date,
365(c), or 386(c) for the benefit of a prior- or international registration number
filed nonprovisional application, inter- and filing date under § 1.1023. If the
national application, or international de- later-filed application is a nonprovi-
sign application. An applicant in a non- sional application, the reference re-
provisional application (including a quired by this paragraph must be in-
nonprovisional application resulting cluded in an application data sheet
from an international application or (§ 1.76(b)(5)). The reference also must
international design application), an identify the relationship of the applica-
international application designating tions, namely, whether the later-filed
the United States, or an international application is a continuation, divi-
design application designating the sional, or continuation-in-part of the
United States may claim the benefit of prior-filed nonprovisional application,
one or more prior-filed copending non- international application, or inter-
provisional applications, international national design application.
applications designating the United (3)(i) The reference required by 35
States, or international design applica- U.S.C. 120 and paragraph (d)(2) of this
tions designating the United States section must be submitted during the
under the conditions set forth in 35 pendency of the later-filed application.
U.S.C. 120, 121, 365(c), or 386(c) and this (ii) If the later-filed application is an
section. application filed under 35 U.S.C. 111(a),
(1) Each prior-filed application must this reference must also be submitted
name the inventor or a joint inventor within the later of four months from
named in the later-filed application as the actual filing date of the later-filed
the inventor or a joint inventor. In ad- application or sixteen months from the
dition, each prior-filed application filing date of the prior-filed applica-
must either be: tion. If the later-filed application is a
(i) An international application enti- nonprovisional application entering
tled to a filing date in accordance with the national stage from an inter-
PCT Article 11 and designating the national application under 35 U.S.C.
United States; 371, this reference must also be sub-
(ii) An international design applica- mitted within the later of four months
tion entitled to a filing date in accord- from the date on which the national
ance with § 1.1023 and designating the stage commenced under 35 U.S.C. 371(b)
United States; or or (f) (§ 1.491(a)), four months from the
(iii) A nonprovisional application date of the initial submission under 35
under 35 U.S.C. 111(a) that is entitled U.S.C. 371 to enter the national stage,
to a filing date as set forth in § 1.53(b) or sixteen months from the filing date
or (d) for which the basic filing fee set of the prior-filed application. The time
81
§ 1.78 37 CFR Ch. I (7–1–16 Edition)
periods in this paragraph do not apply after March 16, 2013, is presented in the
if the later-filed application is: later-filed application. An applicant is
(A) An application for a design pat- not required to provide such a state-
ent; ment if either:
(B) An application filed under 35 (i) The application claims the benefit
U.S.C. 111(a) before November 29, 2000; of a nonprovisional application in
or which a statement under § 1.55(k), para-
(C) An international application filed graph (a)(6) of this section, or this
under 35 U.S.C. 363 before November 29, paragraph that the application con-
2000. tains, or contained at any time, a
(iii) Except as provided in paragraph claim to a claimed invention that has
(e) of this section, failure to timely an effective filing date on or after
submit the reference required by 35 March 16, 2013 has been filed; or
U.S.C. 120 and paragraph (d)(2) of this (ii) The applicant reasonably believes
section is considered a waiver of any on the basis of information already
benefit under 35 U.S.C. 120, 121, 365(c), known to the individuals designated in
or 386(c) to the prior-filed application. § 1.56(c) that the later filed application
(4) The request for a continued pros- does not, and did not at any time, con-
ecution application under § 1.53(d) is tain a claim to a claimed invention
the specific reference required by 35 that has an effective filing date on or
U.S.C. 120 to the prior-filed application. after March 16, 2013.
The identification of an application by
(7) Where benefit is claimed under 35
application number under this section
U.S.C. 120, 121, 365(c), or 386(c) to an
is the identification of every applica-
international application or an inter-
tion assigned that application number
national design application which des-
necessary for a specific reference re-
ignates but did not originate in the
quired by 35 U.S.C. 120 to every such
United States, the Office may require a
application assigned that application
certified copy of such application to-
number.
gether with an English translation
(5) Cross-references to other related
thereof if filed in another language.
applications may be made when appro-
priate (see § 1.14), but cross-references (e) Delayed claims under 35 U.S.C. 120,
to applications for which a benefit is 121, 365(c), or 386(c) for the benefit of a
not claimed under title 35, United prior-filed nonprovisional application,
States Code, must not be included in international application, or international
an application data sheet (§ 1.76(b)(5)). design application. If the reference re-
(6) If a nonprovisional application quired by 35 U.S.C. 120 and paragraph
filed on or after March 16, 2013, other (d)(2) of this section is presented after
than a nonprovisional international de- the time period provided by paragraph
sign application, claims the benefit of (d)(3) of this section, the claim under 35
the filing date of a nonprovisional ap- U.S.C. 120, 121, 365(c), or 386(c) for the
plication or an international applica- benefit of a prior-filed copending non-
tion designating the United States provisional application, international
filed prior to March 16, 2013, and also application designating the United
contains, or contained at any time, a States, or international design applica-
claim to a claimed invention that has tion designating the United States may
an effective filing date as defined in be accepted if the reference required by
§ 1.109 that is on or after March 16, 2013, paragraph (d)(2) of this section was un-
the applicant must provide a statement intentionally delayed. A petition to ac-
to that effect within the later of four cept an unintentionally delayed claim
months from the actual filing date of under 35 U.S.C. 120, 121, 365(c), or 386(c)
the later-filed application, four months for the benefit of a prior-filed applica-
from the date of entry into the nation must be accompanied by:
tional stage as set forth in § 1.491 in an (1) The reference required by 35
international application, sixteen U.S.C. 120 and paragraph (d)(2) of this
months from the filing date of the section to the prior-filed application,
prior-filed application, or the date that unless previously submitted;
a first claim to a claimed invention (2) The petition fee as set forth in
that has an effective filing date on or § 1.17(m); and
82
(3) A statement that the entire delay (a)(3) and (d)(2) of this section will be
between the date the benefit claim was satisfied by the presentation of such
due under paragraph (d)(3) of this sec- specific reference in the first sen-
tion and the date the benefit claim was tence(s) of the specification following
filed was unintentional. The Director the title in a nonprovisional applica-
may require additional information tion filed under 35 U.S.C. 111(a) before
where there is a question whether the September 16, 2012, or resulting from
delay was unintentional. an international application filed
(f) Applications containing patentably under 35 U.S.C. 363 before September
indistinct claims. Where two or more ap- 16, 2012. The provisions of this para-
plications filed by the same applicant graph do not apply to any specific ref-
or assignee contain patentably indis- erence submitted for a petition under
tinct claims, elimination of such paragraph (b) of this section to restore
claims from all but one application the benefit of a provisional application.
may be required in the absence of good (i) Petitions required in international
and sufficient reason for their reten- applications. If a petition under para-
tion during pendency in more than one graph (b), (c), or (e) of this section is
application. required in an international applica-
(g) Applications or patents under reex- tion that was not filed with the United
amination naming different inventors and States Receiving Office and is not a
containing patentably indistinct claims. If nonprovisional application, then such
an application or a patent under reex- petition may be filed in the earliest
amination and at least one other appli- nonprovisional application that claims
cation naming different inventors are benefit under 35 U.S.C. 120, 121, 365(c),
owned by the same person and contain or 386(c) to the international applica-
patentably indistinct claims, and there tion and will be treated as having been
is no statement of record indicating filed in the international application.
that the claimed inventions were com- (j) Benefit under 35 U.S.C. 386(c). Ben-
monly owned or subject to an obliga- efit under 35 U.S.C. 386(c) with respect
tion of assignment to the same person to an international design application
on the effective filing date (as defined is applicable only to nonprovisional ap-
in § 1.109), or on the date of the inven- plications, international applications,
tion, as applicable, of the later claimed and international design applications
invention, the Office may require the filed on or after May 13, 2015, and pat-
applicant or assignee to state whether ents issuing thereon.
the claimed inventions were commonly (k) Time periods in this section. The
owned or subject to an obligation of as- time periods set forth in this section
signment to the same person on such are not extendable, but are subject to
date, and if not, indicate which named 35 U.S.C. 21(b) (and § 1.7(a)), PCT Rule
inventor is the prior inventor, as appli- 80.5, and Hague Agreement Rule 4(4).
cable. Even if the claimed inventions [80 FR 17959, Apr. 2, 2015]
were commonly owned, or subject to an
obligation of assignment to the same § 1.79 Reservation clauses not per-
person on the effective filing date (as mitted.
defined in § 1.109), or on the date of the A reservation for a future application
invention, as applicable, of the later of subject matter disclosed but not
claimed invention, the patentably in- claimed in a pending application will
distinct claims may be rejected under not be permitted in the pending appli-
the doctrine of double patenting in cation, but an application disclosing
view of such commonly owned or as- unclaimed subject matter may contain
signed applications or patents under a reference to a later filed application
reexamination. of the same applicant or owned by a
(h) Applications filed before September common assignee disclosing and claim-
16, 2012. Notwithstanding the require- ing that subject matter.
ment in paragraphs (a)(3) and (d)(2) of
this section that any specific reference THE DRAWINGS
to a prior-filed application be pre-
sented in an application data sheet AUTHORITY: Secs. 1.81 to 1.88 also issued
(§ 1.76), this requirement in paragraph under 35 U.S.C. 113.
83
§ 1.81 37 CFR Ch. I (7–1–16 Edition)
§ 1.81 Drawings required in patent ap- tion itself, disconnected from the old
plication. structure, and also in another view, so
(a) The applicant for a patent is re- much only of the old structure as will
quired to furnish a drawing of the in- suffice to show the connection of the
vention where necessary for the under- invention therewith.
standing of the subject matter sought (c) Where the drawings in a nonprovi-
to be patented. Since corrections are sional application do not comply with
the responsibility of the applicant, the the requirements of paragraphs (a) and
original drawing(s) should be retained (b) of this section, the examiner shall
by the applicant for any necessary fu- require such additional illustration
ture correction. within a time period of not less than
(b) Drawings may include illustra- two months from the date of the send-
tions which facilitate an understanding ing of a notice thereof. Such correc-
of the invention (for example, flow tions are subject to the requirements
sheets in cases of processes, and dia- of § 1.81(d).
grammatic views).
(c) Whenever the nature of the sub- [31 FR 12923, Oct. 4, 1966, as amended at 43 FR
ject matter sought to be patented ad- 4015, Jan. 31, 1978; 60 FR 20226, Apr. 25, 1995;
mits of illustration by a drawing with- 69 FR 56541, Sept. 21, 2004; 78 FR 62405, Oct.
out its being necessary for the under- 21, 2013]
standing of the subject matter and the
§ 1.84 Standards for drawings.
applicant has not furnished such a
drawing, the examiner will require its (a) Drawings. There are two accept-
submission within a time period of not able categories for presenting drawings
less than two months from the date of in utility and design patent applica-
the sending of a notice thereof. tions.
(d) Drawings submitted after the fil- (1) Black ink. Black and white draw-
ing date of the application may not be ings are normally required. India ink,
used to overcome any insufficiency of or its equivalent that secures solid
the specification due to lack of an ena- black lines, must be used for drawings;
bling disclosure or otherwise inad- or
equate disclosure therein, or to supple- (2) Color. Color drawings are per-
ment the original disclosure thereof for mitted in design applications. Where a
the purpose of interpretation of the
design application contains color draw-
scope of any claim.
ings, the application must include the
[43 FR 4015, Jan. 31, 1978, as amended at 53 number of sets of color drawings re-
FR 47808, Nov. 28, 1988; 77 FR 48821, Aug. 14, quired by paragraph (a)(2)(ii) of this
2012; 78 FR 62404, Oct. 21, 2013]
section and the specification must con-
§ 1.83 Content of drawing. tain the reference required by para-
graph (a)(2)(iii) of this section. On rare
(a) The drawing in a nonprovisional occasions, color drawings may be nec-
application must show every feature of essary as the only practical medium by
the invention specified in the claims.
which to disclose the subject matter
However, conventional features dis-
sought to be patented in a utility pat-
closed in the description and claims,
ent application. The color drawings
where their detailed illustration is not
essential for a proper understanding of must be of sufficient quality such that
the invention, should be illustrated in all details in the drawings are repro-
the drawing in the form of a graphical ducible in black and white in the print-
drawing symbol or a labeled represen- ed patent. Color drawings are not per-
tation (e.g., a labeled rectangular box). mitted in international applications
In addition, tables that are included in (see PCT Rule 11.13). The Office will ac-
the specification and sequences that cept color drawings in utility patent
are included in sequence listings should applications only after granting a peti-
not be duplicated in the drawings. tion filed under this paragraph explain-
(b) When the invention consists of an ing why the color drawings are nec-
improvement on an old machine the essary. Any such petition must include
drawing must when possible exhibit, in the following:

one or more views, the improved por- (i) The fee set forth in § 1.17(h);
84
(ii) One (1) set of color drawings if information is provided, it must be

submitted via the Office electronic fil- placed on the front of each sheet with-
ing system or three (3) sets of color in the top margin. Each drawing sheet
drawings if not submitted via the Of- submitted after the filing date of an
fice electronic filing system; and application must be identified as either
(iii) An amendment to the specifica- ‘‘Replacement Sheet’’ or ‘‘New Sheet’’
tion to insert (unless the specification pursuant to § 1.121(d). If a marked-up
contains or has been previously amend- copy of any amended drawing figure in-
ed to contain) the following language cluding annotations indicating the
as the first paragraph of the brief de- changes made is filed, such marked-up
scription of the drawings: copy must be clearly labeled as ‘‘An-
The patent or application file contains at notated Sheet’’ pursuant to § 1.121(d)(1).
least one drawing executed in color. Copies (d) Graphic forms in drawings. Chem-
of this patent or patent application publica- ical or mathematical formulae, tables,
tion with color drawing(s) will be provided and waveforms may be submitted as
by the Office upon request and payment of drawings, and are subject to the same
the necessary fee. requirements as drawings. Each chem-
(b) Photographs—(1) Black and white. ical or mathematical formula must be
Photographs, including photocopies of labeled as a separate figure, using
photographs, are not ordinarily per- brackets when necessary, to show that
mitted in utility and design patent ap- information is properly integrated.
plications. The Office will accept pho- Each group of waveforms must be pre-
tographs in utility and design patent sented as a single figure, using a com-
applications, however, if photographs mon vertical axis with time extending
are the only practicable medium for il- along the horizontal axis. Each indi-
lustrating the claimed invention. For vidual waveform discussed in the speci-
example, photographs or fication must be identified with a sepa-
photomicrographs of: electrophoresis rate letter designation adjacent to the
gels, blots (e.g., immunological, west- vertical axis.
ern, Southern, and northern), (e) Type of paper. Drawings submitted
autoradiographs, cell cultures (stained to the Office must be made on paper
and unstained), histological tissue which is flexible, strong, white,
cross sections (stained and unstained), smooth, non-shiny, and durable. All
animals, plants, in vivo imaging, thin sheets must be reasonably free from
layer chromatography plates, crys- cracks, creases, and folds. Only one
talline structures, and, in a design pat- side of the sheet may be used for the
ent application, ornamental effects, drawing. Each sheet must be reason-
are acceptable. If the subject matter of ably free from erasures and must be
the application admits of illustration free from alterations, overwritings, and
by a drawing, the examiner may re- interlineations. Photographs must be
quire a drawing in place of the photo- developed on paper meeting the sheet-
graph. The photographs must be of suf- size requirements of paragraph (f) of
ficient quality so that all details in the this section and the margin require-
photographs are reproducible in the ments of paragraph (g) of this section.
printed patent. See paragraph (b) of this section for
(2) Color photographs. Color photo- other requirements for photographs.
graphs will be accepted in utility and (f) Size of paper. All drawing sheets in
design patent applications if the condi- an application must be the same size.
tions for accepting color drawings and One of the shorter sides of the sheet is
black and white photographs have been regarded as its top. The size of the
satisfied. See paragraphs (a)(2) and sheets on which drawings are made
(b)(1) of this section. must be:
(c) Identification of drawings. Identi- (1) 21.0 cm. by 29.7 cm. (DIN size A4),
fying indicia should be provided, and if or
provided, should include the title of the (2) 21.6 cm. by 27.9 cm. (81⁄2 by 11
invention, inventor’s name, and appli- inches).
cation number, or docket number (if (g) Margins. The sheets must not con-
any) if an application number has not tain frames around the sight (i.e., the
been assigned to the application. If this usable surface), but should have scan
85
§ 1.84 37 CFR Ch. I (7–1–16 Edition)
target points (i.e., cross-hairs) printed (i) Where views on two or more
on two catercorner margin corners. sheets form, in effect, a single com-
Each sheet must include a top margin plete view, the views on the several
of at least 2.5 cm. (1 inch), a left side sheets must be so arranged that the
margin of at least 2.5 cm. (1 inch), a complete figure can be assembled with-
right side margin of at least 1.5 cm. (5⁄8 out concealing any part of any of the
inch), and a bottom margin of at least views appearing on the various sheets.
1.0 cm. (3⁄8 inch), thereby leaving a (ii) A very long view may be divided
sight no greater than 17.0 cm. by 26.2 into several parts placed one above the
cm. on 21.0 cm. by 29.7 cm. (DIN size other on a single sheet. However, the
A4) drawing sheets, and a sight no relationship between the different
greater than 17.6 cm. by 24.4 cm. (615⁄16 parts must be clear and unambiguous.
by 95⁄8 inches) on 21.6 cm. by 27.9 cm. (3) Sectional views. The plane upon
(81⁄2 by 11 inch) drawing sheets. which a sectional view is taken should
(h) Views. The drawing must contain be indicated on the view from which
as many views as necessary to show the the section is cut by a broken line. The
invention. The views may be plan, ele- ends of the broken line should be des-
vation, section, or perspective views. ignated by Arabic or Roman numerals
Detail views of portions of elements, on corresponding to the view number of
a larger scale if necessary, may also be the sectional view, and should have ar-
used. All views of the drawing must be rows to indicate the direction of sight.
grouped together and arranged on the Hatching must be used to indicate sec-
sheet(s) without wasting space, pref- tion portions of an object, and must be
erably in an upright position, clearly made by regularly spaced oblique par-
separated from one another, and must allel lines spaced sufficiently apart to
not be included in the sheets con- enable the lines to be distinguished
taining the specifications, claims, or without difficulty. Hatching should not
abstract. Views must not be connected impede the clear reading of the ref-
by projection lines and must not con- erence characters and lead lines. If it is
tain center lines. Waveforms of elec- not possible to place reference char-
trical signals may be connected by acters outside the hatched area, the
dashed lines to show the relative tim- hatching may be broken off wherever
ing of the waveforms. reference characters are inserted.
(1) Exploded views. Exploded views, Hatching must be at a substantial
with the separated parts embraced by a angle to the surrounding axes or prin-
bracket, to show the relationship or cipal lines, preferably 45°. A cross sec-
order of assembly of various parts are tion must be set out and drawn to show
permissible. When an exploded view is all of the materials as they are shown
shown in a figure which is on the same in the view from which the cross sec-
sheet as another figure, the exploded tion was taken. The parts in cross sec-
view should be placed in brackets. tion must show proper material(s) by
(2) Partial views. When necessary, a hatching with regularly spaced parallel
view of a large machine or device in its oblique strokes, the space between
entirety may be broken into partial strokes being chosen on the basis of
views on a single sheet, or extended the total area to be hatched. The var-
over several sheets if there is no loss in ious parts of a cross section of the
facility of understanding the view. Par- same item should be hatched in the
tial views drawn on separate sheets same manner and should accurately
must always be capable of being linked and graphically indicate the nature of
edge to edge so that no partial view the material(s) that is illustrated in
contains parts of another partial view. cross section. The hatching of jux-
A smaller scale view should be included taposed different elements must be an-
showing the whole formed by the par- gled in a different way. In the case of
tial views and indicating the positions large areas, hatching may be confined
of the parts shown. When a portion of a to an edging drawn around the entire
view is enlarged for magnification pur- inside of the outline of the area to be
poses, the view and the enlarged view hatched. Different types of hatching
must each be labeled as separate views. should have different conventional
86
meanings as regards the nature of a durable, clean, black (except for color
material seen in cross section. drawings), sufficiently dense and dark,
(4) Alternate position. A moved posi- and uniformly thick and well-defined.
tion may be shown by a broken line su- The weight of all lines and letters must
perimposed upon a suitable view if this be heavy enough to permit adequate re-
can be done without crowding; other- production. This requirement applies
wise, a separate view must be used for to all lines however fine, to shading,
this purpose. and to lines representing cut surfaces
(5) Modified forms. Modified forms of in sectional views. Lines and strokes of
construction must be shown in sepa- different thicknesses may be used in
rate views. the same drawing where different
(i) Arrangement of views. One view thicknesses have a different meaning.
must not be placed upon another or (m) Shading. The use of shading in
within the outline of another. All views views is encouraged if it aids in under-
on the same sheet should stand in the standing the invention and if it does
same direction and, if possible, stand not reduce legibility. Shading is used
so that they can be read with the sheet to indicate the surface or shape of
held in an upright position. If views spherical, cylindrical, and conical ele-
wider than the width of the sheet are ments of an object. Flat parts may also
necessary for the clearest illustration be lightly shaded. Such shading is pre-
of the invention, the sheet may be ferred in the case of parts shown in per-
turned on its side so that the top of the
spective, but not for cross sections. See
sheet, with the appropriate top margin
paragraph (h)(3) of this section. Spaced
to be used as the heading space, is on
lines for shading are preferred. These
the right-hand side. Words must appear
lines must be thin, as few in number as
in a horizontal, left-to-right fashion
practicable, and they must contrast
when the page is either upright or
with the rest of the drawings. As a sub-
turned so that the top becomes the
stitute for shading, heavy lines on the
right side, except for graphs utilizing
shade side of objects can be used except
standard scientific convention to de-
where they superimpose on each other
note the axis of abscissas (of X) and the
or obscure reference characters. Light
axis of ordinates (of Y).
should come from the upper left corner
(j) Front page view. The drawing must
contain as many views as necessary to at an angle of 45°. Surface delineations
show the invention. One of the views should preferably be shown by proper
should be suitable for inclusion on the shading. Solid black shading areas are
front page of the patent application not permitted, except when used to
publication and patent as the illustra- represent bar graphs or color.
tion of the invention. Views must not (n) Symbols. Graphical drawing sym-
be connected by projection lines and bols may be used for conventional ele-
must not contain center lines. Appli- ments when appropriate. The elements
cant may suggest a single view (by fig- for which such symbols and labeled
ure number) for inclusion on the front representations are used must be ade-
page of the patent application publica- quately identified in the specification.
tion and patent. Known devices should be illustrated by
(k) Scale. The scale to which a draw- symbols which have a universally rec-
ing is made must be large enough to ognized conventional meaning and are
show the mechanism without crowding generally accepted in the art. Other
when the drawing is reduced in size to symbols which are not universally rec-
two-thirds in reproduction. Indications ognized may be used, subject to ap-
such as ‘‘actual size’’ or ‘‘scale 1⁄2’’ on proval by the Office, if they are not
the drawings are not permitted since likely to be confused with existing con-
these lose their meaning with repro- ventional symbols, and if they are
duction in a different format. readily identifiable.
(l) Character of lines, numbers, and let- (o) Legends. Suitable descriptive leg-
ters. All drawings must be made by a ends may be used subject to approval
process which will give them satisfac- by the Office, or may be required by
tory reproduction characteristics. the examiner where necessary for un-

Every line, number, and letter must be derstanding of the drawing. They
87
§ 1.84 37 CFR Ch. I (7–1–16 Edition)
should contain as few words as pos- acter must be underlined to make it

sible. clear that a lead line has not been left
(p) Numbers, letters, and reference char- out by mistake. Lead lines must be ex-
acters. (1) Reference characters (numer- ecuted in the same way as lines in the
als are preferred), sheet numbers, and drawing. See paragraph (l) of this sec-
view numbers must be plain and leg- tion.
ible, and must not be used in associa- (r) Arrows. Arrows may be used at the
tion with brackets or inverted commas, ends of the lines, provided that their
or enclosed within outlines, e.g., encir- meaning is clear, as follows:
cled. They must be oriented in the (1) On a lead line, a freestanding
same direction as the view so as to arrow to indicate the entire section to-
avoid having to rotate the sheet. Ref- wards which it points;
erence characters should be arranged (2) On a lead line, an arrow touching
to follow the profile of the object de- a line to indicate the surface shown by
picted. the line looking along the direction of
(2) The English alphabet must be the arrow; or
used for letters, except where another (3) To show the direction of move-
alphabet is customarily used, such as ment.
the Greek alphabet to indicate angles, (s) Copyright or Mask Work Notice. A
wavelengths, and mathematical for- copyright or mask work notice may ap-
mulas. pear in the drawing, but must be placed
(3) Numbers, letters, and reference within the sight of the drawing imme-
characters must measure at least .32 diately below the figure representing
cm. (1⁄8 inch) in height. They should not the copyright or mask work material
be placed in the drawing so as to inter- and be limited to letters having a print
fere with its comprehension. Therefore, size of .32 cm. to .64 cm. (1⁄8 to 1⁄4
they should not cross or mingle with inches) high. The content of the notice
the lines. They should not be placed must be limited to only those elements
upon hatched or shaded surfaces. When provided for by law. For example,
necessary, such as indicating a surface ‘‘© 1983 John Doe’’ (17 U.S.C. 401) and
or cross section, a reference character ‘‘*M* John Doe’’ (17 U.S.C. 909) would
may be underlined and a blank space be properly limited and, under current
may be left in the hatching or shading statutes, legally sufficient notices of
where the character occurs so that it copyright and mask work, respectively.
appears distinct. Inclusion of a copyright or mask work
(4) The same part of an invention ap- notice will be permitted only if the au-
pearing in more than one view of the thorization language set forth in
drawing must always be designated by § 1.71(e) is included at the beginning
the same reference character, and the (preferably as the first paragraph) of
same reference character must never the specification.
be used to designate different parts. (t) Numbering of sheets of drawings.
(5) Reference characters not men- The sheets of drawings should be num-
tioned in the description shall not ap- bered in consecutive Arabic numerals,
pear in the drawings. Reference char- starting with 1, within the sight as de-
acters mentioned in the description fined in paragraph (g) of this section.
must appear in the drawings. These numbers, if present, must be
(q) Lead lines. Lead lines are those placed in the middle of the top of the
lines between the reference characters sheet, but not in the margin. The num-
and the details referred to. Such lines bers can be placed on the right-hand
may be straight or curved and should side if the drawing extends too close to
be as short as possible. They must the middle of the top edge of the usable
originate in the immediate proximity surface. The drawing sheet numbering
of the reference character and extend must be clear and larger than the num-
to the feature indicated. Lead lines bers used as reference characters to
must not cross each other. Lead lines avoid confusion. The number of each
are required for each reference char- sheet should be shown by two Arabic
acter except for those which indicate numerals placed on either side of an
the surface or cross section on which oblique line, with the first being the
they are placed. Such a reference char- sheet number, and the second being the
88
total number of sheets of drawings, tified in an Office action, objections to

with no other marking. the drawings in a utility or plant appli-
(u) Numbering of views. (1) The dif- cation will not be held in abeyance,
ferent views must be numbered in con- and a request to hold objections to the
secutive Arabic numerals, starting drawings in abeyance will not be con-
with 1, independent of the numbering sidered a bona fide attempt to advance
of the sheets and, if possible, in the the application to final action
order in which they appear on the (§ 1.135(c)). If a drawing in a design ap-
drawing sheet(s). Partial views in- plication meets the requirements of
tended to form one complete view, on § 1.84(e), (f), and (g) and is suitable for
one or several sheets, must be identi- reproduction, but is not otherwise in
fied by the same number followed by a compliance with § 1.84, the drawing
capital letter. View numbers must be may be admitted for examination.
preceded by the abbreviation ‘‘FIG.’’ (b) The Office will not release draw-
Where only a single view is used in an ings for purposes of correction. If cor-
application to illustrate the claimed rections are necessary, new corrected
invention, it must not be numbered drawings must be submitted within the
and the abbreviation ‘‘FIG.’’ must not time set by the Office.
appear. (c) If a corrected drawing is required
(2) Numbers and letters identifying or if a drawing does not comply with
the views must be simple and clear and § 1.84 or an amended drawing submitted
must not be used in association with under § 1.121(d) in a nonprovisional
brackets, circles, or inverted commas. international design application does
The view numbers must be larger than not comply with § 1.1026 at the time an
the numbers used for reference char- application is allowed, the Office may
acters. notify the applicant in a notice of al-
(v) Security markings. Authorized se- lowability and set a three-month pe-
curity markings may be placed on the riod of time from the mail date of the
drawings provided they are outside the notice of allowability within which the
sight, preferably centered in the top applicant must file a corrected drawing
margin. in compliance with § 1.84 or 1.1026, as
(w) Corrections. Any corrections on applicable, to avoid abandonment. This
drawings submitted to the Office must time period is not extendable under
be durable and permanent. § 1.136 (see § 1.136(c)).
(x) Holes. No holes should be made by
applicant in the drawing sheets. FR 57055, Sept. 20, 2000; 69 FR 56541, Sept. 21,
(y) Types of drawings. See § 1.152 for 2004; 78 FR 62405, Oct. 21, 2013; 80 FR 17962,
design drawings, § 1.1026 for inter- Apr. 2, 2015]
national design reproductions, § 1.165
for plant drawings, and § 1.173(a)(2) for § 1.88 [Reserved]
reissue drawings.
MODELS, EXHIBITS, SPECIMENS
[58 FR 38723, July 20, 1993; 58 FR 45841, 45842,
Aug. 31, 1993, as amended at 61 FR 42804, Aug.
19, 1996; 62 FR 53190, Oct. 10, 1997; 65 FR 54669, AUTHORITY: Secs. 1.91 to 1.95 also issued
Sept. 8, 2000; 65 FR 57055, Sept. 20, 2000; 69 FR under 35 U.S.C. 114.
56541, Sept. 21, 2004; 70 FR 3891, Jan. 27, 2005;
78 FR 11057, Feb. 14, 2013; 80 FR 17962, Apr. 2, § 1.91 Models or exhibits not generally
2015] admitted as part of application or
patent.
§ 1.85 Corrections to drawings. (a) A model or exhibit will not be ad-
(a) A utility or plant application will mitted as part of the record of an appli-
not be placed on the files for examina- cation unless it:
tion until objections to the drawings (1) Substantially conforms to the re-
have been corrected. Except as pro- quirements of § 1.52 or § 1.84;
vided in § 1.215(c), any patent applica- (2) Is specifically required by the Of-
tion publication will not include draw- fice; or
ings filed after the application has (3) Is filed with a petition under this
been placed on the files for examina- section including:

tion. Unless applicant is otherwise no- (i) The fee set forth in § 1.17(h); and
89
§ 1.92 37 CFR Ch. I (7–1–16 Edition)
(ii) An explanation of why entry of The provisions of this paragraph do not

the model or exhibit in the file record apply to a model or exhibit that sub-
is necessary to demonstrate patent- stantially conforms to the require-
ability. ments of § 1.52 or § 1.84, where the model
(b) Notwithstanding the provisions of or exhibit has been described by photo-
paragraph (a) of this section, a model, graphs that substantially conform to
working model, or other physical ex- § 1.84, or where the model, exhibit or
hibit may be required by the Office if specimen is perishable.
deemed necessary for any purpose in (c) Where applicant is notified, pur-
examination of the application. suant to paragraph (a) of this section,
(c) Unless the model or exhibit sub- of the need to arrange for return of a
stantially conforms to the require- model, exhibit or specimen, applicant
ments of § 1.52 or § 1.84 under paragraph must arrange for the return within the
(a)(1) of this section, it must be accom- period set in such notice, to avoid dis-
panied by photographs that show mul- posal of the model, exhibit or specimen
tiple views of the material features of by the Office. Extensions of time are
the model or exhibit and that substan-
available under § 1.136, except in the
tially conform to the requirements of
case of perishables. Failure to establish
§ 1.84.
that the return of the item has been ar-
[62 FR 53190, Oct. 10, 1997, as amended at 65 ranged for within the period set or fail-
FR 54670, Sept. 8, 2000; 69 FR 56541, Sept. 21, ure to have the item removed from Of-
2004] fice storage within a reasonable
§ 1.92 [Reserved] amount of time notwithstanding any
arrangement for return, will permit
§ 1.93 Specimens. the Office to dispose of the model, ex-
When the invention relates to a com- hibit or specimen.
position of matter, the applicant may [69 FR 56542, Sept. 21, 2004]
be required to furnish specimens of the
composition, or of its ingredients or § 1.95 Copies of exhibits.
intermediates, for the purpose of in- Copies of models or other physical
spection or experiment. exhibits will not ordinarily be fur-
§ 1.94 Return of models, exhibits or nished by the Office, and any model or
specimens. exhibit in an application or patent
shall not be taken from the Office ex-
(a) Models, exhibits, or specimens
cept in the custody of an employee of
may be returned to the applicant if no
longer necessary for the conduct of the Office specially authorized by the
business before the Office. When appli- Director.
cant is notified that a model, exhibit,
§ 1.96 Submission of computer pro-
or specimen is no longer necessary for gram listings.
the conduct of business before the Of-
fice and will be returned, applicant (a) General. Descriptions of the oper-
must arrange for the return of the ation and general content of computer
model, exhibit, or specimen at the ap- program listings should appear in the
plicant’s expense. The Office will dis- description portion of the specifica-
pose of perishables without notice to tion. A computer program listing for
applicant unless applicant notifies the the purpose of this section is defined as
Office upon submission of the model, a printout that lists in appropriate se-
exhibit or specimen that a return is de- quence the instructions, routines, and
sired and makes arrangements for its other contents of a program for a com-
return promptly upon notification by puter. The program listing may be ei-
the Office that the model, exhibit or ther in machine or machine-inde-
specimen is no longer necessary for the pendent (object or source) language
conduct of business before the Office. which will cause a computer to perform
(b) Applicant is responsible for re- a desired procedure or task such as
taining the actual model, exhibit, or solve a problem, regulate the flow of
specimen for the enforceable life of any work in a computer, or control or mon-
patent resulting from the application. itor events. Computer program listings
90
may be submitted in patent applica- (i) Computer Compatibility: IBM PC/

tions as set forth in paragraphs (b) and XT/AT, or compatibles, or Apple Mac-
(c) of this section. intosh;
(b) Material which will be printed in the (ii) Operating System Compatibility:
patent: If the computer program listing MS-DOS, MS-Windows, Unix, or Mac-
is contained in 300 lines or fewer, with intosh;
each line of 72 characters or fewer, it (iii) Line Terminator: ASCII Carriage
may be submitted either as drawings or Return plus ASCII Line Feed;
as part of the specification. (iv) Control Codes: the data must not
(1) Drawings. If the listing is sub- be dependent on control characters or
mitted as drawings, it must be sub- codes which are not defined in the
mitted in the manner and complying ASCII character set; and
with the requirements for drawings as (v) Compression: uncompressed data.
provided in § 1.84. At least one figure
[61 FR 42804, Aug. 19, 1996, as amended at 65
numeral is required on each sheet of FR 54670, Sept. 8, 2000; 70 FR 54266, Sept. 14,
drawing. 2005]
(2) Specification. (i) If the listing is
submitted as part of the specification, INFORMATION DISCLOSURE STATEMENT
it must be submitted in accordance
with the provisions of § 1.52. § 1.97 Filing of information disclosure
(ii) Any listing having more than 60 statement.
lines of code that is submitted as part (a) In order for an applicant for a pat-
of the specification must be positioned ent or for a reissue of a patent to have
at the end of the description but before an information disclosure statement in
the claims. Any amendment must be compliance with § 1.98 considered by
made by way of submission of a sub- the Office during the pendency of the
stitute sheet. application, the information disclosure
(c) As an appendix which will not be statement must satisfy one of para-
printed: Any computer program listing graphs (b), (c), or (d) of this section.
may, and any computer program list- (b) An information disclosure state-
ing having over 300 lines (up to 72 char- ment shall be considered by the Office
acters per line) must, be submitted on if filed by the applicant within any one
a compact disc in compliance with of the following time periods:
§ 1.52(e). A compact disc containing (1) Within three months of the filing
such a computer program listing is to date of a national application other
be referred to as a ‘‘computer program than a continued prosecution applica-
listing appendix.’’ The ‘‘computer pro- tion under § 1.53(d);
gram listing appendix’’ will not be part (2) Within three months of the date
of the printed patent. The specification of entry of the national stage as set
must include a reference to the ‘‘com- forth in § 1.491 in an international ap-
puter program listing appendix’’ at the plication;
location indicated in § 1.77(b)(5). (3) Before the mailing of a first Office
(1) Multiple computer program list- action on the merits;
ings for a single application may be (4) Before the mailing of a first Office
placed on a single compact disc. Mul- action after the filing of a request for
tiple compact discs may be submitted continued examination under § 1.114; or
for a single application if necessary. A (5) Within three months of the date
separate compact disc is required for of publication of the international reg-
each application containing a com- istration under Hague Agreement Arti-
puter program listing that must be cle 10(3) in an international design ap-
submitted on a ‘‘computer program plication.
listing appendix.’’ (c) An information disclosure state-
(2) The ‘‘computer program listing ment shall be considered by the Office
appendix’’ must be submitted on a if filed after the period specified in
compact disc that complies with paragraph (b) of this section, provided
§ 1.52(e) and the following specifications that the information disclosure state-
(no other format shall be allowed): ment is filed before the mailing date of
91
§ 1.98 37 CFR Ch. I (7–1–16 Edition)
any of a final action under § 1.113, a no- is considered to be, material to patent-
tice of allowance under § 1.311, or an ac- ability as defined in § 1.56(b).
tion that otherwise closes prosecution (i) If an information disclosure state-
in the application, and it is accom- ment does not comply with either this
panied by one of: section or § 1.98, it will be placed in the
(1) The statement specified in para- file but will not be considered by the
graph (e) of this section; or Office.
(2) The fee set forth in § 1.17(p). [57 FR 2034, Jan. 17, 1992, as amended at 59
(d) An information disclosure state- FR 32658, June 24, 1994; 60 FR 20226, Apr. 25,
ment shall be considered by the Office 1995; 61 FR 42805, Aug. 19, 1996; 62 FR 53190,
if filed by the applicant after the pe- Oct. 10, 1997; 65 FR 14872, Mar. 20, 2000; 65 FR
riod specified in paragraph (c) of this 54670, Sept. 8, 2000; 80 FR 17963, Apr. 2, 2015]
section, provided that the information
disclosure statement is filed on or be- § 1.98 Content of information disclo-
fore payment of the issue fee and is ac- sure statement.
companied by: (a) Any information disclosure state-
(1) The statement specified in para- ment filed under § 1.97 shall include the
graph (e) of this section; and items listed in paragraphs (a)(1), (a)(2)
(2) The fee set forth in § 1.17(p). and (a)(3) of this section.
(e) A statement under this section (1) A list of all patents, publications,
must state either: applications, or other information sub-
(1) That each item of information mitted for consideration by the Office.
contained in the information disclo- U.S. patents and U.S. patent applica-
sure statement was first cited in any tion publications must be listed in a
communication from a foreign patent section separately from citations of
office in a counterpart foreign applica- other documents. Each page of the list
tion not more than three months prior must include:
to the filing of the information disclo- (i) The application number of the ap-
sure statement; or plication in which the information dis-
(2) That no item of information con- closure statement is being submitted;
tained in the information disclosure (ii) A column that provides a space,
statement was cited in a communica- next to each document to be consid-
tion from a foreign patent office in a ered, for the examiner’s initials; and
counterpart foreign application, and, (iii) A heading that clearly indicates
to the knowledge of the person signing that the list is an information disclo-
the certification after making reason- sure statement.
able inquiry, no item of information (2) A legible copy of:
contained in the information disclo- (i) Each foreign patent;
sure statement was known to any indi- (ii) Each publication or that portion
vidual designated in § 1.56(c) more than which caused it to be listed, other than
three months prior to the filing of the U.S. patents and U.S. patent applica-
information disclosure statement. tion publications unless required by
(f) No extensions of time for filing an the Office;
information disclosure statement are (iii) For each cited pending unpub-
permitted under § 1.136. If a bona fide lished U.S. application, the application
attempt is made to comply with § 1.98, specification including the claims, and
but part of the required content is in- any drawing of the application, or that
advertently omitted, additional time portion of the application which caused
may be given to enable full compli- it to be listed including any claims di-
ance. rected to that portion; and
(g) An information disclosure state- (iv) All other information or that
ment filed in accordance with this sec- portion which caused it to be listed.
tion shall not be construed as a rep- (3)(i) A concise explanation of the
resentation that a search has been relevance, as it is presently understood
made. by the individual designated in § 1.56(c)
(h) The filing of an information dis- most knowledgeable about the content
closure statement shall not be con- of the information, of each patent, pub-
strued to be an admission that the in- lication, or other information listed

formation cited in the statement is, or that is not in the English language.
92
The concise explanation may be either (1) The earlier application is properly
separate from applicant’s specification identified in the information disclosure
or incorporated therein. statement and is relied on for an ear-
(ii) A copy of the translation if a lier effective filing date under 35 U.S.C.
written English-language translation 120; and
of a non-English-language document, (2) The information disclosure state-
or portion thereof, is within the posses- ment submitted in the earlier applica-
sion, custody, or control of, or is read- tion complies with paragraphs (a)
ily available to any individual des- through (c) of this section.
ignated in § 1.56(c). [65 FR 54671, Sept. 8, 2000, as amended at 65
(b)(1) Each U.S. patent listed in an FR 57055, Sept. 20, 2000; 68 FR 38628, June 30,
information disclosure statement must 2003; 69 FR 56542, Sept. 21, 2004]
be identified by inventor, patent num-
§ 1.99 [Reserved]
ber, and issue date.
(2) Each U.S. patent application pub- EXAMINATION OF APPLICATIONS
lication listed in an information disclo-
sure statement shall be identified by AUTHORITY: Secs. 1.101 to 1.108 also issued
applicant, patent application publica- under 35 U.S.C. 131, 132.
tion number, and publication date.
(3) Each U.S. application listed in an § 1.101 [Reserved]
information disclosure statement must § 1.102 Advancement of examination.
be identified by the inventor, applica-
tion number, and filing date. (a) Applications will not be advanced
(4) Each foreign patent or published out of turn for examination or for fur-
foreign patent application listed in an ther action except as provided by this
information disclosure statement must part, or upon order of the Director to
expedite the business of the Office, or
be identified by the country or patent
upon filing of a request under para-
office which issued the patent or pub-
graph (b) or (e) of this section or upon
lished the application, an appropriate
filing a petition or request under para-
document number, and the publication
graph (c) or (d) of this section with a
date indicated on the patent or pub-
showing which, in the opinion of the
lished application.
Director, will justify so advancing it.
(5) Each publication listed in an in- (b) Applications wherein the inven-
formation disclosure statement must tions are deemed of peculiar impor-
be identified by publisher, author (if tance to some branch of the public
any), title, relevant pages of the publi- service and the head of some depart-
cation, date, and place of publication. ment of the Government requests im-
(c) When the disclosures of two or mediate action for that reason, may be
more patents or publications listed in advanced for examination.
an information disclosure statement (c) A petition to make an application
are substantively cumulative, a copy of special may be filed without a fee if the
one of the patents or publications as basis for the petition is:
specified in paragraph (a) of this sec- (1) The applicant’s age or health; or
tion may be submitted without copies (2) That the invention will materi-
of the other patents or publications, ally:
provided that it is stated that these (i) Enhance the quality of the envi-
other patents or publications are cu- ronment;
mulative. (ii) Contribute to the development or
(d) A copy of any patent, publication, conservation of energy resources; or
pending U.S. application or other infor- (iii) Contribute to countering ter-
mation, as specified in paragraph (a) of rorism.
this section, listed in an information (d) A petition to make an application
disclosure statement is required to be special on grounds other than those re-
provided, even if the patent, publica- ferred to in paragraph (c) of this sec-
tion, pending U.S. application or other tion must be accompanied by the fee
information was previously submitted set forth in § 1.17(h).
to, or cited by, the Office in an earlier (e) A request for prioritized examina-
application, unless: tion under this paragraph must comply
93
§ 1.103 37 CFR Ch. I (7–1–16 Edition)
with the requirements of this para- (2) A request for prioritized examina-
graph and be accompanied by the tion may be filed with or after a re-
prioritized examination fee set forth in quest for continued examination in
§ 1.17(c), the processing fee set forth in compliance with § 1.114. If the applica-
§ 1.17(i), and if not already paid, the tion is a utility application, the re-
publication fee set forth in § 1.18(d). An quest must be filed via the Office’s
application for which prioritized exam- electronic filing system. The request
ination has been requested may not must be filed before the mailing of the
contain or be amended to contain more first Office action after the filing of the
than four independent claims, more request for continued examination
than thirty total claims, or any mul- under § 1.114. Only a single such request
tiple dependent claim. Prioritized ex- for prioritized examination under this
amination under this paragraph will paragraph may be granted in an appli-
not be accorded to international application.
cations that have not entered the na- (36 U.S.C. 6; 15 U.S.C. 1113, 1123)
tional stage under 35 U.S.C. 371, design
applications, reissue applications, pro- [24 FR 10332, Dec. 22, 1959, as amended at 47
visional applications, or reexamination FR 41276, Sept. 17, 1982; 54 FR 6903, Feb. 15,
1989; 60 FR 20226, Apr. 25, 1995; 62 FR 53191,
proceedings. A request for prioritized Oct. 10, 1997; 65 FR 54671, Sept. 8, 2000; 69 FR
examination must also comply with 56542, Sept. 21, 2004; 76 FR 59054, Sept. 23,
the requirements of paragraph (e)(1) or 2011; 76 FR 78569, Dec. 19, 2011; 79 FR 12390,
paragraph (e)(2) of this section. Mar. 5, 2014]
(1) A request for prioritized examina-
tion may be filed with an original util- § 1.103 Suspension of action by the Of-
ity or plant nonprovisional application fice.
under 35 U.S.C. 111(a). The application (a) Suspension for cause. On request of
must include a specification as pre- the applicant, the Office may grant a
scribed by 35 U.S.C. 112 including at suspension of action by the Office
least one claim, a drawing when nec- under this paragraph for good and suf-
essary, and the inventor’s oath or dec- ficient cause. The Office will not sus-
laration on filing, except that the fil- pend action if a reply by applicant to
ing of an inventor’s oath or declaration an Office action is outstanding. Any
may be postponed in accordance with petition for suspension of action under
§ 1.53(f)(3) if an application data sheet this paragraph must specify a period of
meeting the conditions specified in suspension not exceeding six months.
§ 1.53(f)(3)(i) is present upon filing. If Any petition for suspension of action
the application is a utility application, under this paragraph must also in-
it must be filed via the Office’s elec- clude:
tronic filing system and include the fil- (1) A showing of good and sufficient
ing fee under § 1.16(a), search fee under cause for suspension of action; and
§ 1.16(k), and examination fee under (2) The fee set forth in § 1.17(g), unless
§ 1.16(o) upon filing. If the application such cause is the fault of the Office.
is a plant application, it must include (b) Limited suspension of action in a
the filing fee under § 1.16(c), search fee continued prosecution application (CPA)
under § 1.16(m), and examination fee filed under § 1.53(d). On request of the
under § 1.16(q) upon filing. The request applicant, the Office may grant a sus-
for prioritized examination in compli- pension of action by the Office under
ance with this paragraph must be this paragraph in a continued prosecu-
present upon filing of the application, tion application filed under § 1.53(d) for
except that the applicant may file an a period not exceeding three months.
amendment to cancel any independent Any request for suspension of action
claims in excess of four, any total under this paragraph must be filed
claims in excess of thirty, and any with the request for an application
multiple dependent claim not later filed under § 1.53(d), specify the period
than one month from a first decision of suspension, and include the proc-
on the request for prioritized examina- essing fee set forth in § 1.17(i).
tion. This one-month time period is not (c) Limited suspension of action after a
extendable. request for continued examination (RCE)
94
under § 1.114. On request of the appli- (3) The appropriate department or

cant, the Office may grant a suspension agency requests such suspension.
of action by the Office under this para-
graph after the filing of a request for FR 57056, Sept. 20, 2000; 67 FR 523, Jan. 4,
continued examination in compliance 2002; 69 FR 49999, Aug. 12, 2004; 69 FR 56542,
with § 1.114 for a period not exceeding Sept. 21, 2004; 78 FR 11057, Feb. 14, 2013]
three months. Any request for suspen-
sion of action under this paragraph § 1.104 Nature of examination.
must be filed with the request for con- (a) Examiner’s action. (1) On taking up
tinued examination under § 1.114, speci- an application for examination or a
fy the period of suspension, and include patent in a reexamination proceeding,
the processing fee set forth in § 1.17(i).
the examiner shall make a thorough
(d) Deferral of examination. On request study thereof and shall make a thor-
of the applicant, the Office may grant ough investigation of the available
a deferral of examination under the prior art relating to the subject matter
conditions specified in this paragraph of the claimed invention. The examina-
for a period not extending beyond three tion shall be complete with respect
years from the earliest filing date for both to compliance of the application
which a benefit is claimed under title or patent under reexamination with
35, United States Code. A request for the applicable statutes and rules and to
deferral of examination under this the patentability of the invention as
paragraph must include the publication claimed, as well as with respect to
fee set forth in § 1.18(d) and the proc- matters of form, unless otherwise indi-
essing fee set forth in § 1.17(i). A re- cated.
quest for deferral of examination under
(2) The applicant, or in the case of a
this paragraph will not be granted un-
reexamination proceeding, both the
less:
patent owner and the requester, will be
(1) The application is an original util- notified of the examiner’s action. The
ity or plant application filed under reasons for any adverse action or any
§ 1.53(b) or resulting from entry of an objection or requirement will be stated
international application into the na- in an Office action and such informa-
tional stage after compliance with tion or references will be given as may
§ 1.495; be useful in aiding the applicant, or in
(2) The applicant has not filed a non- the case of a reexamination proceeding
publication request under § 1.213(a), or the patent owner, to judge the pro-
has filed a request under § 1.213(b) to re- priety of continuing the prosecution.
scind a previously filed nonpublication (3) An international-type search will
request; be made in all national applications
(3) The application is in condition for filed on and after June 1, 1978.
publication as provided in § 1.211(c); and (4) Any national application may also
(4) The Office has not issued either an have an international-type search re-
Office action under 35 U.S.C. 132 or a port prepared thereon at the time of
notice of allowance under 35 U.S.C. 151. the national examination on the mer-
(e) Notice of suspension on initiative of its, upon specific written request there-
the Office. The Office will notify appli- for and payment of the international-
cant if the Office suspends action by type search report fee set forth in
the Office on an application on its own § 1.21(e). The Patent and Trademark Of-
initiative. fice does not require that a formal re-
(f) Suspension of action for public safe- port of an international-type search be
ty or defense. The Office may suspend prepared in order to obtain a search fee
action by the Office by order of the Di- refund in a later filed international ap-
rector if the following conditions are plication.
met: (b) Completeness of examiner’s action.
(1) The application is owned by the The examiner’s action will be complete
United States; as to all matters, except that in appro-
(2) Publication of the invention may priate circumstances, such as
be detrimental to the public safety or misjoinder of invention, fundamental

defense; and defects in the application, and the like,
95
§ 1.104 37 CFR Ch. I (7–1–16 Edition)
the action of the examiner may be lim- fective filing date of the claimed inven-
ited to such matters before further action, and the claimed invention was
tion is made. However, matters of form made as a result of activities under-
need not be raised by the examiner taken within the scope of the joint re-
until a claim is found allowable. search agreement; and
(c) Rejection of claims. (1) If the inven- (B) The application for patent for the
tion is not considered patentable, or claimed invention discloses or is
not considered patentable as claimed, amended to disclose the names of the
the claims, or those considered parties to the joint research agree-
unpatentable will be rejected. ment.
(2) In rejecting claims for want of (5)(i) Subject matter which qualifies
novelty or for obviousness, the exam- as prior art under 35 U.S.C. 102(e), (f),
iner must cite the best references at or (g) in effect prior to March 16, 2013,
his or her command. When a reference and a claimed invention in an applica-
is complex or shows or describes invention filed on or after November 29, 1999,
tions other than that claimed by the or any patent issuing thereon, in an ap-
applicant, the particular part relied on plication filed before November 29,
must be designated as nearly as prac- 1999, but pending on December 10, 2004,
ticable. The pertinence of each ref- or any patent issuing thereon, or in
erence, if not apparent, must be clearly any patent granted on or after Decem-
explained and each rejected claim spec- ber 10, 2004, will be treated as com-
ified. monly owned for purposes of 35 U.S.C.
(3) In rejecting claims the examiner 103(c) in effect prior to March 16, 2013,
may rely upon admissions by the appli- if the applicant or patent owner pro-
cant, or the patent owner in a reexam- vides a statement to the effect that the
ination proceeding, as to any matter subject matter and the claimed inven-
affecting patentability and, insofar as tion, at the time the claimed invention
rejections in applications are con-
was made, were owned by the same per-
cerned, may also rely upon facts within
son or subject to an obligation of as-
his or her knowledge pursuant to para-
signment to the same person.
graph (d)(2) of this section.
(4)(i) Subject matter which would (ii) Subject matter which qualifies as
otherwise qualify as prior art under 35 prior art under 35 U.S.C. 102(e), (f), or
U.S.C. 102(a)(2) and a claimed invention (g) in effect prior to March 16, 2013, and
will be treated as commonly owned for a claimed invention in an application
purposes of 35 U.S.C. 102(b)(2)(C) if the pending on or after December 10, 2004,
applicant or patent owner provides a or in any patent granted on or after
statement to the effect that the sub- December 10, 2004, will be treated as
ject matter and the claimed invention, commonly owned for purposes of 35
not later than the effective filing date U.S.C. 103(c) in effect prior to March 16,
of the claimed invention, were owned 2013, on the basis of a joint research
by the same person or subject to an ob- agreement under 35 U.S.C. 103(c)(2) in
ligation of assignment to the same per- effect prior to March 16, 2013, if:
son. (A) The applicant or patent owner
(ii) Subject matter which would oth- provides a statement to the effect that
erwise qualify as prior art under 35 the subject matter and the claimed in-
U.S.C. 102(a)(2) and a claimed invention vention were made by or on behalf of
will be treated as commonly owned for the parties to a joint research agree-
purposes of 35 U.S.C. 102(b)(2)(C) on the ment, within the meaning of 35 U.S.C.
basis of a joint research agreement 100(h) and § 1.9(e), which was in effect
under 35 U.S.C. 102(c) if: on or before the date the claimed in-
(A) The applicant or patent owner vention was made, and that the
provides a statement to the effect that claimed invention was made as a result
the subject matter was developed and of activities undertaken within the
the claimed invention was made by or scope of the joint research agreement;
on behalf of one or more parties to a and
joint research agreement, within the (B) The application for patent for the
meaning of 35 U.S.C. 100(h) and § 1.9(e), claimed invention discloses or is

that was in effect on or before the ef- amended to disclose the names of the
96
parties to the joint research agree- time as may be specified by the exam-
ment. iner. Failure by the examiner to re-
(6) Patents issued prior to December spond to any statement commenting
10, 2004, from applications filed prior to on reasons for allowance does not give
November 29, 1999, are subject to 35 rise to any implication.
U.S.C. 103(c) in effect on November 28, [62 FR 53191, Oct. 10, 1997, as amended at 65
1999. FR 14872, Mar. 20, 2000; 65 FR 54671, Sept. 8,
(d) Citation of references. (1) If domes- 2000; 65 FR 57056, Sept. 20, 2000; 70 FR 1823,
tic patents are cited by the examiner, Jan. 11, 2005; 70 FR 54266, Sept. 14, 2005; 72 FR
their numbers and dates, and the 46841, Aug. 21, 2007; 74 FR 52690, Oct. 14, 2009;
names of the patentees will be stated. 78 FR 11057, Feb. 14, 2013]
If domestic patent application publica-
tions are cited by the examiner, their § 1.105 Requirements for information.
publication number, publication date, (a)(1) In the course of examining or
and the names of the applicants will be treating a matter in a pending or aban-
stated. If foreign published applica- doned application, in a patent, or in a
tions or patents are cited, their nation- reexamination proceeding, including a
ality or country, numbers and dates, reexamination proceeding ordered as a
and the names of the patentees will be result of a supplemental examination
stated, and such other data will be fur- proceeding, the examiner or other Of-
nished as may be necessary to enable fice employee may require the submis-
the applicant, or in the case of a reex- sion, from individuals identified under
amination proceeding, the patent § 1.56(c), or any assignee, of such infor-
owner, to identify the published appli- mation as may be reasonably necessary
cations or patents cited. In citing for- to properly examine or treat the mat-
eign published applications or patents, ter, for example:
in case only a part of the document is (i) Commercial databases: The exist-
involved, the particular pages and ence of any particularly relevant com-
sheets containing the parts relied upon mercial database known to any of the
will be identified. If printed publica- inventors that could be searched for a
tions are cited, the author (if any), particular aspect of the invention.
title, date, pages or plates, and place of (ii) Search: Whether a search of the
publication, or place where a copy can prior art was made, and if so, what was
be found, will be given. searched.
(2) When a rejection in an application (iii) Related information: A copy of
is based on facts within the personal any non-patent literature, published
knowledge of an employee of the Of- application, or patent (U.S. or foreign),
fice, the data shall be as specific as by any of the inventors, that relates to
possible, and the reference must be the claimed invention.
supported, when called for by the appli- (iv) Information used to draft applica-
cant, by the affidavit of such employee, tion: A copy of any non-patent lit-
and such affidavit shall be subject to erature, published application, or pat-
contradiction or explanation by the af- ent (U.S. or foreign) that was used to
fidavits of the applicant and other per- draft the application.
sons. (v) Information used in invention proc-
(e) Reasons for allowance. If the exam- ess: A copy of any non-patent lit-
iner believes that the record of the erature, published application, or pat-
prosecution as a whole does not make ent (U.S. or foreign) that was used in
clear his or her reasons for allowing a the invention process, such as by de-
claim or claims, the examiner may set signing around or providing a solution
forth such reasoning. The reasons shall to accomplish an invention result.
be incorporated into an Office action (vi) Improvements: Where the claimed
rejecting other claims of the applica- invention is an improvement, identi-
tion or patent under reexamination or fication of what is being improved.
be the subject of a separate commu- (vii) In use: Identification of any use
nication to the applicant or patent of the claimed invention known to any
owner. The applicant or patent owner of the inventors at the time the appli-
may file a statement commenting on cation was filed notwithstanding the

the reasons for allowance within such date of the use.
97
§§ 1.106–1.108 37 CFR Ch. I (7–1–16 Edition)
(viii) Technical information known to (b) The effective filing date for a
applicant. Technical information claimed invention in a reissue applica-
known to applicant concerning the re- tion or a reissued patent is determined
lated art, the disclosure, the claimed by deeming the claim to the invention
subject matter, other factual informa- to have been contained in the patent
tion pertinent to patentability, or con- for which reissue was sought.
cerning the accuracy of the examiner’s [80 FR 17963, Apr. 2, 2015]
stated interpretation of such items.
(2) Requirements for factual informa- § 1.110 Inventorship and ownership of
tion known to applicant may be pre- the subject matter of individual
sented in any appropriate manner, for claims.
example: When one or more joint inventors are
(i) A requirement for factual infor- named in an application or patent, the
mation; Office may require an applicant or pat-
(ii) Interrogatories in the form of entee to identify the inventorship and
specific questions seeking applicant’s ownership or obligation to assign own-
factual knowledge; or ership, of each claimed invention on its
(iii) Stipulations as to facts with effective filing date (as defined in
which the applicant may agree or dis- § 1.109) or on its date of invention, as
agree. applicable, when necessary for purposes
(3) Any reply to a requirement for in- of an Office proceeding. The Office may
formation pursuant to this section that also require an applicant or patentee to
states either that the information re- identify the invention dates of the sub-
quired to be submitted is unknown to ject matter of each claim when nec-
or is not readily available to the party essary for purposes of an Office pro-
or parties from which it was requested ceeding.
may be accepted as a complete reply. [78 FR 11058, Feb. 14, 2013]
(b) The requirement for information
of paragraph (a)(1) of this section may ACTION BY APPLICANT AND FURTHER
be included in an Office action, or sent CONSIDERATION
separately.
(c) A reply, or a failure to reply, to a AUTHORITY: Secs. 1.111 to 1.113 also issued
requirement for information under this under 35 U.S.C. 132.
section will be governed by §§ 1.135 and
1.136. § 1.111 Reply by applicant or patent
owner to a non-final Office action.
FR 56542, Sept. 21, 2004; 72 FR 46841, Aug. 21,
(a)(1) If the Office action after the
2007; 74 FR 52690, Oct. 14, 2009; 77 FR 48821, first examination (§ 1.104) is adverse in
Aug. 14, 2012; 80 FR 17963, Apr. 2, 2015] any respect, the applicant or patent
owner, if he or she persists in his or her
§§ 1.106–1.108 [Reserved] application for a patent or reexamina-
tion proceeding, must reply and re-
§ 1.109 Effective filing date of a quest reconsideration or further exam-
claimed invention under the Leahy- ination, with or without amendment.
Smith America Invents Act.
See §§ 1.135 and 1.136 for time for reply
(a) The effective filing date for a to avoid abandonment.
claimed invention in a patent or appli- (2) Supplemental replies. (i) A reply
cation for patent, other than in a re- that is supplemental to a reply that is
issue application or reissued patent, is in compliance with § 1.111(b) will not be
the earliest of: entered as a matter of right except as
(1) The actual filing date of the pat- provided in paragraph (a)(2)(ii) of this
ent or the application for the patent section. The Office may enter a supple-
containing a claim to the invention; or mental reply if the supplemental reply
(2) The filing date of the earliest ap- is clearly limited to:
plication for which the patent or appli- (A) Cancellation of a claim(s);
cation is entitled, as to such invention, (B) Adoption of the examiner sugges-
to a right of priority or the benefit of tion(s);
an earlier filing date under 35 U.S.C. (C) Placement of the application in

119, 120, 121, 365, or 386. condition for allowance;
98
(D) Reply to an Office requirement § 1.112 Reconsideration before final

made after the first reply was filed; action.
(E) Correction of informalities (e.g., After reply by applicant or patent
typographical errors); or owner (§ 1.111 or § 1.945) to a non-final
(F) Simplification of issues for ap- action and any comments by an inter
peal. partes reexamination requester (§ 1.947),
(ii) A supplemental reply will be en- the application or the patent under re-
tered if the supplemental reply is filed examination will be reconsidered and
within the period during which action again examined. The applicant, or in
by the Office is suspended under the case of a reexamination proceeding
§ 1.103(a) or (c). the patent owner and any third party
(b) In order to be entitled to recon- requester, will be notified if claims are
sideration or further examination, the rejected, objections or requirements
applicant or patent owner must reply made, or decisions favorable to patent-
to the Office action. The reply by the ability are made, in the same manner
applicant or patent owner must be re- as after the first examination (§ 1.104).
duced to a writing which distinctly and Applicant or patent owner may reply
specifically points out the supposed er- to such Office action in the same man-
rors in the examiner’s action and must ner provided in § 1.111 or § 1.945, with or
reply to every ground of objection and without amendment, unless such Office
rejection in the prior Office action. The action indicates that it is made final
reply must present arguments pointing (§ 1.113) or an appeal (§ 41.31 of this
out the specific distinctions believed to title) has been taken (§ 1.116), or in an
render the claims, including any newly inter partes reexamination, that it is an
presented claims, patentable over any action closing prosecution (§ 1.949) or a
applied references. If the reply is with right of appeal notice (§ 1.953).
respect to an application, a request [69 FR 49999, Aug. 12, 2004]
may be made that objections or re-
quirements as to form not necessary to § 1.113 Final rejection or action.
further consideration of the claims be (a) On the second or any subsequent
held in abeyance until allowable sub- examination or consideration by the
ject matter is indicated. The appli- examiner the rejection or other action
cant’s or patent owner’s reply must ap- may be made final, whereupon appli-
pear throughout to be a bona fide at- cant’s, or for ex parte reexaminations
tempt to advance the application or filed under § 1.510, patent owner’s reply
the reexamination proceeding to final is limited to appeal in the case of rejec-
action. A general allegation that the tion of any claim (§ 41.31 of this title),
claims define a patentable invention or to amendment as specified in § 1.114
without specifically pointing out how or § 1.116. Petition may be taken to the
the language of the claims patentably Director in the case of objections or re-
distinguishes them from the references quirements not involved in the rejec-
does not comply with the requirements tion of any claim (§ 1.181). Reply to a
of this section. final rejection or action must comply
(c) In amending in reply to a rejec- with § 1.114 or paragraph (c) of this sec-
tion of claims in an application or pat- tion. For final actions in an inter partes
ent under reexamination, the applicant reexamination filed under § 1.913, see
or patent owner must clearly point out § 1.953.
the patentable novelty which he or she (b) In making such final rejection,
thinks the claims present in view of the examiner shall repeat or state all
the state of the art disclosed by the grounds of rejection then considered
references cited or the objections applicable to the claims in the applica-
made. The applicant or patent owner tion, clearly stating the reasons in sup-
must also show how the amendments port thereof.
avoid such references or objections. (c) Reply to a final rejection or ac-
[46 FR 29182, May 29, 1981, as amended at 62 tion must include cancellation of, or
appeal from the rejection of, each re-
FR 53192, Oct. 10, 1997; 65 FR 54672, Sept. 8,

2000; 69 FR 56542, Sept. 21, 2004; 70 FR 3891, jected claim. If any claim stands al-
Jan. 27, 2005] lowed, the reply to a final rejection or
99
§ 1.114 37 CFR Ch. I (7–1–16 Edition)
action must comply with any require- (2) An application for a utility or
ments or objections as to form. plant patent filed under 35 U.S.C. 111(a)
[65 FR 14872, Mar. 20, 2000, as amended at 65 before June 8, 1995;
FR 76773, Dec. 7, 2000; 69 FR 49999, Aug. 12, (3) An international application filed
2004] under 35 U.S.C. 363 before June 8, 1995,
or an international application that
§ 1.114 Request for continued examina- does not comply with 35 U.S.C. 371;
tion.
(4) An application for a design pat-
(a) If prosecution in an application is ent;
closed, an applicant may request con- (5) An international design applica-
tinued examination of the application tion; or
by filing a submission and the fee set
(6) A patent under reexamination.
forth in § 1.17(e) prior to the earliest of:
(1) Payment of the issue fee, unless a [65 FR 50104, Aug. 16, 2000, as amended at 69
petition under § 1.313 is granted; FR 49999, Aug. 12, 2004; 72 FR 46841, Aug. 21,
(2) Abandonment of the application; 2007; 74 FR 52691, Oct. 14, 2009; 80 FR 17963,
or Apr. 2, 2015]
(3) The filing of a notice of appeal to
the U.S. Court of Appeals for the Fed- AMENDMENTS
eral Circuit under 35 U.S.C. 141, or the
commencement of a civil action under AUTHORITY: Secs. 1.115 to 1.127 also issued
35 U.S.C. 145 or 146, unless the appeal or under 35 U.S.C. 132.
civil action is terminated.
(b) Prosecution in an application is § 1.115 Preliminary amendments.
closed as used in this section means (a) A preliminary amendment is an
that the application is under appeal, or amendment that is received in the Of-
that the last Office action is a final ac- fice (§ 1.6) on or before the mail date of
tion (§ 1.113), a notice of allowance the first Office action under § 1.104. The
(§ 1.311), or an action that otherwise patent application publication may in-
closes prosecution in the application. clude preliminary amendments
(c) A submission as used in this sec- (§ 1.215(a)).
tion includes, but is not limited to, an
(1) A preliminary amendment that is
information disclosure statement, an
present on the filing date of an applica-
amendment to the written description,
claims, or drawings, new arguments, or tion is part of the original disclosure of
new evidence in support of patent- the application.
ability. If reply to an Office action (2) A preliminary amendment filed
under 35 U.S.C. 132 is outstanding, the after the filing date of the application
submission must meet the reply re- is not part of the original disclosure of
quirements of § 1.111. the application.
(d) If an applicant timely files a sub- (b) A preliminary amendment in
mission and fee set forth in § 1.17(e), the compliance with § 1.121 will be entered
Office will withdraw the finality of any unless disapproved by the Director.
Office action and the submission will (1) A preliminary amendment seek-
be entered and considered. If an appli- ing cancellation of all the claims with-
cant files a request for continued ex- out presenting any new or substitute
amination under this section after ap- claims will be disapproved.
peal, but prior to a decision on the ap- (2) A preliminary amendment may be
peal, it will be treated as a request to disapproved if the preliminary amend-
withdraw the appeal and to reopen ment unduly interferes with the prepa-
prosecution of the application before
ration of a first Office action in an ap-
the examiner. An appeal brief (§ 41.37 of
plication. Factors that will be consid-
this title) or a reply brief (§ 41.41 of this
title), or related papers, will not be ered in disapproving a preliminary
considered a submission under this sec- amendment include:
tion. (i) The state of preparation of a first
(e) The provisions of this section do Office action as of the date of receipt
not apply to: (§ 1.6) of the preliminary amendment by

(1) A provisional application; the Office; and
100
(ii) The nature of any changes to the limitation of further prosecution under
specification or claims that would re- § 1.957(c).
sult from entry of the preliminary (d)(1) Notwithstanding the provisions
amendment. of paragraph (b) of this section, no
(3) A preliminary amendment will amendment other than canceling
not be disapproved under (b)(2) of this claims, where such cancellation does
section if it is filed no later than: not affect the scope of any other pend-
(i) Three months from the filing date ing claim in the proceeding, can be
of an application under § 1.53(b); made in an inter partes reexamination
(ii) The filing date of a continued proceeding after the right of appeal no-
prosecution application under § 1.53(d); tice under § 1.953 except as provided in
or § 1.981 or as permitted by § 41.77(b)(1) of
(iii) Three months from the date the this title.
national stage is entered as set forth in
(2) Notwithstanding the provisions of
§ 1.491 in an international application.
paragraph (b) of this section, an
(4) The time periods specified in para-
amendment made after a final rejec-
graph (b)(3) of this section are not ex-
tion or other final action (§ 1.113) in an
tendable.
ex parte reexamination filed under
[69 FR 56543, Sept. 21, 2004] § 1.510, or an action closing prosecution
(§ 1.949) in an inter partes reexamination
§ 1.116 Amendments and affidavits or filed under § 1.913 may not cancel
other evidence after final action
and prior to appeal. claims where such cancellation affects
the scope of any other pending claim in
(a) An amendment after final action the reexamination proceeding except
must comply with § 1.114 or this sec- as provided in § 1.981 or as permitted by
tion. § 41.77(b)(1) of this title.
(b) After a final rejection or other
(e) An affidavit or other evidence
final action (§ 1.113) in an application or
submitted after a final rejection or
in an ex parte reexamination filed
under § 1.510, or an action closing pros- other final action (§ 1.113) in an applica-
ecution (§ 1.949) in an inter partes reex- tion or in an ex parte reexamination
amination filed under § 1.913, but before filed under § 1.510, or an action closing
or on the same date of filing an appeal prosecution (§ 1.949) in an inter partes
(§ 41.31 or § 41.61 of this title): reexamination filed under § 1.913 but
(1) An amendment may be made can- before or on the same date of filing an
celing claims or complying with any appeal (§ 41.31 or § 41.61 of this title),
requirement of form expressly set forth may be admitted upon a showing of
in a previous Office action; good and sufficient reasons why the af-
(2) An amendment presenting re- fidavit or other evidence is necessary
jected claims in better form for consid- and was not earlier presented.
eration on appeal may be admitted; or (f) Notwithstanding the provisions of
(3) An amendment touching the mer- paragraph (e) of this section, no affi-
its of the application or patent under davit or other evidence can be made in
reexamination may be admitted upon a an inter partes reexamination pro-
showing of good and sufficient reasons ceeding after the right of appeal notice
why the amendment is necessary and under § 1.953 except as provided in
was not earlier presented. § 1.981 or as permitted by § 41.77(b)(1) of
(c) The admission of, or refusal to this title.
admit, any amendment after a final re- (g) After decision on appeal, amend-
jection, a final action, an action clos- ments, affidavits and other evidence
ing prosecution, or any related pro- can only be made as provided in §§ 1.198
ceedings will not operate to relieve the
and 1.981, or to carry into effect a rec-
application or reexamination pro-
ommendation under § 41.50(c) of this
ceeding from its condition as subject to
title.
appeal or to save the application from
abandonment under § 1.135, or the reex-
[69 FR 49999, Aug. 12, 2004]

amination prosecution from termi-
nation under § 1.550(d) or § 1.957(b) or
101
§§ 1.117–1.119 37 CFR Ch. I (7–1–16 Edition)
§§ 1.117–1.119 [Reserved] (2) Amendment by replacement section.

If the sections of the specification con-
§ 1.121 Manner of making amendments tain section headings as provided in
in applications. § 1.77(b), § 1.154(b), or § 1.163(c), amend-
(a) Amendments in applications, other ments to the specification, other than
than reissue applications. Amendments the claims, may be made by submit-
in applications, other than reissue ap- ting:
plications, are made by filing a paper, (i) A reference to the section heading
in compliance with § 1.52, directing that along with an instruction, which un-
specified amendments be made. ambiguously identifies the location, to
delete that section of the specification
(b) Specification. Amendments to the
and to replace such deleted section
specification, other than the claims,
with a replacement section; and
computer listings (§ 1.96) and sequence
(ii) A replacement section with
listings (§ 1.825), must be made by add-
markings to show all changes relative
ing, deleting or replacing a paragraph,
to the previous version of the section.
by replacing a section, or by a sub-
The text of any added subject matter
stitute specification, in the manner
must be shown by underlining the
specified in this section.
added text. The text of any deleted
(1) Amendment to delete, replace, or add matter must be shown by strike-
a paragraph. Amendments to the speci- through except that double brackets
fication, including amendment to a placed before and after the deleted
section heading or the title of the in- characters may be used to show dele-
vention which are considered for tion of five or fewer consecutive char-
amendment purposes to be an amend- acters. The text of any deleted subject
ment of a paragraph, must be made by matter must be shown by being placed
submitting: within double brackets if strike-
(i) An instruction, which unambig- through cannot be easily perceived.
uously identifies the location, to delete (3) Amendment by substitute specifica-
one or more paragraphs of the speci- tion. The specification, other than the
fication, replace a paragraph with one claims, may also be amended by sub-
or more replacement paragraphs, or mitting:
add one or more paragraphs; (i) An instruction to replace the spec-
(ii) The full text of any replacement ification; and
paragraph with markings to show all (ii) A substitute specification in com-
the changes relative to the previous pliance with §§ 1.125(b) and (c).
version of the paragraph. The text of (4) Reinstatement of previously deleted
any added subject matter must be paragraph or section. A previously de-
shown by underlining the added text. leted paragraph or section may be rein-
The text of any deleted matter must be stated only by a subsequent amend-
shown by strike-through except that ment adding the previously deleted
double brackets placed before and after paragraph or section.
the deleted characters may be used to (5) Presentation in subsequent amend-
show deletion of five or fewer consecu- ment document. Once a paragraph or
tive characters. The text of any deleted section is amended in a first amend-
subject matter must be shown by being ment document, the paragraph or sec-
placed within double brackets if strike- tion shall not be re-presented in a sub-
through cannot be easily perceived; sequent amendment document unless it
(iii) The full text of any added para- is amended again or a substitute speci-
graphs without any underlining; and fication is provided.
(iv) The text of a paragraph to be de- (c) Claims. Amendments to a claim
leted must not be presented with must be made by rewriting the entire
strike-through or placed within double claim with all changes (e.g., additions
brackets. The instruction to delete and deletions) as indicated in this sub-
may identify a paragraph by its para- section, except when the claim is being
graph number or include a few words canceled. Each amendment document
from the beginning, and end, of the that includes a change to an existing
paragraph, if needed for paragraph claim, cancellation of an existing

identification purposes. claim or addition of a new claim, must
102
include a complete listing of all claims the presentation of text. The presen-
ever presented, including the text of all tation of a clean version of any claim
pending and withdrawn claims, in the having the status of ‘‘original,’’ ‘‘with-
application. The claim listing, includ- drawn’’ or ‘‘previously presented’’ will
ing the text of the claims, in the constitute an assertion that it has not
amendment document will serve to re- been changed relative to the imme-
place all prior versions of the claims, diate prior version, except to omit
in the application. In the claim listing, markings that may have been present
the status of every claim must be indi- in the immediate prior version of the
cated after its claim number by using claims of the status of ‘‘withdrawn’’ or
one of the following identifiers in a ‘‘previously presented.’’ Any claim
parenthetical expression: (Original), added by amendment must be indicated
(Currently amended), (Canceled), with the status of ‘‘new’’ and presented
(Withdrawn), (Previously presented), in clean version, i.e., without any un-
(New), and (Not entered). derlining.
(1) Claim listing. All of the claims pre- (4) When claim text shall not be pre-
sented in a claim listing shall be presented; canceling a claim. (i) No claim
sented in ascending numerical order. text shall be presented for any claim in
Consecutive claims having the same the claim listing with the status of
status of ‘‘canceled’’ or ‘‘not entered’’ ‘‘canceled’’ or ‘‘not entered.’’
may be aggregated into one statement (ii) Cancellation of a claim shall be
(e.g., Claims 1–5 (canceled)). The claim effected by an instruction to cancel a
listing shall commence on a separate particular claim number. Identifying
sheet of the amendment document and the status of a claim in the claim list-
the sheet(s) that contain the text of ing as ‘‘canceled’’ will constitute an in-
any part of the claims shall not construction to cancel the claim.
tain any other part of the amendment.
(5) Reinstatement of previously canceled
(2) When claim text with markings is re-
claim. A claim which was previously
quired. All claims being currently
canceled may be reinstated only by
amended in an amendment paper shall
adding the claim as a ‘‘new’’ claim
be presented in the claim listing, indi-
cate a status of ‘‘currently amended,’’ with a new claim number.
and be submitted with markings to in- (d) Drawings. One or more application
dicate the changes that have been drawings shall be amended in the fol-
made relative to the immediate prior lowing manner: Any changes to an ap-
version of the claims. The text of any plication drawing must be in compli-
added subject matter must be shown by ance with § 1.84 or, for a nonprovisional
underlining the added text. The text of international design application, in
any deleted matter must be shown by compliance with §§ 1.84(c) and 1.1026 and
strike-through except that double must be submitted on a replacement
brackets placed before and after the de- sheet of drawings which shall be an at-
leted characters may be used to show tachment to the amendment document
deletion of five or fewer consecutive and, in the top margin, labeled ‘‘Re-
characters. The text of any deleted placement Sheet.’’ Any replacement
subject matter must be shown by being sheet of drawings shall include all of
placed within double brackets if strike- the figures appearing on the immediate
through cannot be easily perceived. prior version of the sheet, even if only
Only claims having the status of ‘‘cur- one figure is amended. Any new sheet
rently amended,’’ or ‘‘withdrawn’’ if of drawings containing an additional
also being amended, shall include figure must be labeled in the top mar-
markings. If a withdrawn claim is cur- gin as ‘‘New Sheet.’’ All changes to the
rently amended, its status in the claim drawings shall be explained, in detail,
listing may be identified as ‘‘within either the drawing amendment or re-
drawn—currently amended.’’ marks section of the amendment paper.
(3) When claim text in clean version is (1) A marked-up copy of any amended
required. The text of all pending claims drawing figure, including annotations
not being currently amended shall be indicating the changes made, may be
presented in the claim listing in clean included. The marked-up copy must be
version, i.e., without any markings in clearly labeled as ‘‘Annotated Sheet’’
103
§§ 1.122–1.224 37 CFR Ch. I (7–1–16 Edition)
and must be presented in the amend- application file but may not be en-
ment or remarks section that explains tered.
the change to the drawings. [68 FR 38628, June 30, 2003, as amended at 69
(2) A marked-up copy of any amended FR 56543, Sept. 21, 2004; 80 FR 17963, Apr. 2,
drawing figure, including annotations 2015]
indicating the changes made, must be
provided when required by the exam- §§ 1.122–1.224 [Reserved]
iner. § 1.125 Substitute specification.
(e) Disclosure consistency. The disclo-
(a) If the number or nature of the
sure must be amended, when required
amendments or the legibility of the ap-
by the Office, to correct inaccuracies of plication papers renders it difficult to
description and definition, and to se- consider the application, or to arrange
cure substantial correspondence be- the papers for printing or copying, the
tween the claims, the remainder of the Office may require the entire specifica-
specification, and the drawings. tion, including the claims, or any part
(f) No new matter. No amendment may thereof, be rewritten.
introduce new matter into the disclo- (b) Subject to § 1.312, a substitute
sure of an application. specification, excluding the claims,
(g) Exception for examiner’s amend- may be filed at any point up to pay-
ments. Changes to the specification, in- ment of the issue fee if it is accom-
cluding the claims, of an application panied by a statement that the sub-
made by the Office in an examiner’s stitute specification includes no new
amendment may be made by specific matter.
instructions to insert or delete subject (c) A substitute specification sub-
mitted under this section must be sub-
matter set forth in the examiner’s
mitted with markings showing all the
amendment by identifying the precise
changes relative to the immediate
point in the specification or the prior version of the specification of
claim(s) where the insertion or dele- record. The text of any added subject
tion is to be made. Compliance with matter must be shown by underlining
paragraphs (b)(1), (b)(2), or (c) of this the added text. The text of any deleted
section is not required. matter must be shown by strike-
(h) Amendment sections. Each section through except that double brackets
of an amendment document (e.g., placed before and after the deleted
amendment to the claims, amendment characters may be used to show dele-
to the specification, replacement draw- tion of five or fewer consecutive char-
ings, and remarks) must begin on a acters. The text of any deleted subject
separate sheet. matter must be shown by being placed
(i) Amendments in reissue applications. within double brackets if strike-
Any amendment to the description and through cannot be easily perceived. An
claims in reissue applications must be accompanying clean version (without
made in accordance with § 1.173. markings) must also be supplied. Num-
(j) Amendments in reexamination pro- bering the paragraphs of the specifica-
ceedings. Any proposed amendment to tion of record is not considered a
change that must be shown pursuant to
the description and claims in patents
this paragraph.
involved in reexamination proceedings
(d) A substitute specification under
must be made in accordance with this section is not permitted in a re-
§ 1.530. issue application or in a reexamination
(k) Amendments in provisional applica- proceeding.
tions. Amendments in provisional ap-
plications are not usually made. If an [62 FR 53193, Oct. 10, 1997, as amended at 65
FR 54673, Sept. 8, 2000; 68 FR 38630, June 30,
amendment is made to a provisional 2003]
application, however, it must comply
with the provisions of this section. Any § 1.126 Numbering of claims.
amendments to a provisional applica- The original numbering of the claims
tion shall be placed in the provisional must be preserved throughout the pros-
ecution. When claims are canceled the
104
remaining claims must not be renum- matically withdrawn upon the timely
bered. When claims are added, they filing of the submission and payment of
must be numbered by the applicant the second fee set forth in § 1.17(r). Any
consecutively beginning with the num- submission filed after a final rejection
ber next following the highest num- made in an application subsequent to
bered claim previously presented the fee set forth in § 1.17(r) having been
(whether entered or not). When the ap- twice paid will be treated as set forth
plication is ready for allowance, the in § 1.116. A submission as used in this
examiner, if necessary, will renumber paragraph includes, but is not limited
the claims consecutively in the order to, an information disclosure state-
in which they appear or in such order ment, an amendment to the written de-
as may have been requested by appli- scription, claims or drawings and a new
cant. substantive argument or new evidence
[62 FR 53194, Oct. 10, 1997]
in support of patentability.
(b)(1) In an application, other than
§ 1.127 Petition from refusal to admit for reissue or a design patent, that has
amendment. been pending for at least three years as
From the refusal of the primary ex- of June 8, 1995; taking into account any
aminer to admit an amendment, in reference made in the application to
whole or in part, a petition will lie to any earlier filed application under 35
the Director under § 1.181. U.S.C. 120, 121, and 365(c), no require-
ment for restriction or for the filing of
TRANSITIONAL PROVISIONS divisional applications shall be made
or maintained in the application after
§ 1.129 Transitional procedures for June 8, 1995, except where:
limited examination after final re- (i) The requirement was first made in
jection and restriction practice. the application or any earlier filed ap-
(a) An applicant in an application, plication under 35 U.S.C. 120, 121 and
other than for reissue or a design pat- 365(c) prior to April 8, 1995;
ent, that has been pending for at least (ii) The examiner has not made a re-
two years as of June 8, 1995, taking into quirement for restriction in the
account any reference made in such ap- present or parent application prior to
plication to any earlier filed applica- April 8, 1995, due to actions by the ap-
tion under 35 U.S.C. 120, 121 and 365(c), plicant; or
is entitled to have a first submission (iii) The required fee for examination
entered and considered on the merits of each additional invention was not
after final rejection under the fol- paid.
lowing circumstances: The Office will (2) If the application contains more
consider such a submission, if the first than one independent and distinct in-
submission and the fee set forth in vention and a requirement for restric-
§ 1.17(r) are filed prior to the filing of tion or for the filing of divisional appli-
an appeal brief and prior to abandon- cations cannot be made or maintained
ment of the application. The finality of pursuant to this paragraph, applicant
the final rejection is automatically will be so notified and given a time pe-
withdrawn upon the timely filing of riod to:
the submission and payment of the fee (i) Elect the invention or inventions
set forth in § 1.17(r). If a subsequent to be searched and examined, if no
final rejection is made in the applica- election has been made prior to the no-
tion, applicant is entitled to have a tice, and pay the fee set forth in
second submission entered and consid- § 1.17(s) for each independent and dis-
ered on the merits after the subsequent tinct invention claimed in the applica-
final rejection under the following cir- tion in excess of one which applicant
cumstances: The Office will consider elects;
such a submission, if the second sub- (ii) Confirm an election made prior to
mission and a second fee set forth in the notice and pay the fee set forth in
§ 1.17(r) are filed prior to the filing of § 1.17(s) for each independent and dis-
an appeal brief and prior to abandon- tinct invention claimed in the applica-
ment of the application. The finality of tion in addition to the one invention
the subsequent final rejection is auto- which applicant previously elected; or
105
§ 1.130 37 CFR Ch. I (7–1–16 Edition)
(iii) File a petition under this section ject matter disclosed directly or indi-
traversing the requirement. If the re- rectly from the inventor or a joint in-
quired petition is filed in a timely ventor. An affidavit or declaration
manner, the original time period for under this paragraph must identify the
electing and paying the fee set forth in subject matter publicly disclosed and
§ 1.17(s) will be deferred and any deci- provide the date such subject matter
sion on the petition affirming or modi- was publicly disclosed by the inventor
fying the requirement will set a new or a joint inventor or another who ob-
time period to elect the invention or tained the subject matter disclosed di-
inventions to be searched and exam- rectly or indirectly from the inventor
ined and to pay the fee set forth in or a joint inventor.
§ 1.17(s) for each independent and dis- (1) If the subject matter publicly dis-
tinct invention claimed in the applica- closed on that date was in a printed
tion in excess of one which applicant publication, the affidavit or declara-
elects. tion must be accompanied by a copy of
(3) The additional inventions for the printed publication.
which the required fee has not been (2) If the subject matter publicly dis-
paid will be withdrawn from consider- closed on that date was not in a print-
ation under § 1.142(b). An applicant who ed publication, the affidavit or declara-
desires examination of an invention so tion must describe the subject matter
withdrawn from consideration can file with sufficient detail and particularity
a divisional application under 35 U.S.C. to determine what subject matter had
121.
been publicly disclosed on that date by
(c) The provisions of this section
the inventor or a joint inventor or an-
shall not be applicable to any applica-
other who obtained the subject matter
tion filed after June 8, 1995.
disclosed directly or indirectly from
[60 FR 20226, Apr. 25, 1995] the inventor or a joint inventor.
(c) When this section is not available.
AFFIDAVITS OVERCOMING REJECTIONS The provisions of this section are not
§ 1.130 Affidavit or declaration of attri- available if the rejection is based upon
bution or prior public disclosure a disclosure made more than one year
under the Leahy-Smith America In- before the effective filing date of the
vents Act. claimed invention. The provisions of
(a) Affidavit or declaration of attribu- this section may not be available if the
tion. When any claim of an application rejection is based upon a U.S. patent or
or a patent under reexamination is re- U.S. patent application publication of a
jected, the applicant or patent owner patented or pending application nam-
may submit an appropriate affidavit or ing another inventor, the patent or
declaration to disqualify a disclosure pending application claims an inven-
as prior art by establishing that the tion that is the same or substantially
disclosure was made by the inventor or the same as the applicant’s or patent
a joint inventor, or the subject matter owner’s claimed invention, and the af-
disclosed was obtained directly or indi- fidavit or declaration contends that an
rectly from the inventor or a joint in- inventor named in the U.S. patent or
ventor. U.S. patent application publication de-
(b) Affidavit or declaration of prior rived the claimed invention from the
public disclosure. When any claim of an inventor or a joint inventor named in
application or a patent under reexam- the application or patent, in which
ination is rejected, the applicant or case an applicant or a patent owner
patent owner may submit an appro- may file a petition for a derivation pro-
priate affidavit or declaration to dis- ceeding pursuant to § 42.401 et seq. of
qualify a disclosure as prior art by es- this title.
tablishing that the subject matter dis- (d) Applications and patents to which
closed had, before such disclosure was this section is applicable. The provisions
made or before such subject matter was of this section apply to any application
effectively filed, been publicly dis- for patent, and to any patent issuing
closed by the inventor or a joint inven- thereon, that contains, or contained at

tor or another who obtained the sub- any time:
106
(1) A claim to a claimed invention this section shall be such, in character

that has an effective filing date as de- and weight, as to establish reduction to
fined in § 1.109 that is on or after March practice prior to the effective date of
16, 2013; or the reference, or conception of the in-
(2) A specific reference under 35 vention prior to the effective date of
U.S.C. 120, 121, 365(c), or 386(c) to any the reference coupled with due dili-
patent or application that contains, or gence from prior to said date to a sub-
contained at any time, a claim to a sequent reduction to practice or to the
claimed invention that has an effective filing of the application. Original ex-
filing date as defined in § 1.109 that is hibits of drawings or records, or photo-
on or after March 16, 2013. copies thereof, must accompany and
[78 FR 11058, Feb. 14, 2013, as amended at 80
form part of the affidavit or declara-
FR 17963, Apr. 2, 2015] tion or their absence must be satisfac-
torily explained.
§ 1.131 Affidavit or declaration of prior (c) When any claim of an application
invention or to disqualify com- or a patent under reexamination is re-
monly owned patent or published jected under 35 U.S.C. 103 as in effect
application as prior art. on March 15, 2013, on a U.S. patent or
(a) When any claim of an application U.S. patent application publication
or a patent under reexamination is re- which is not prior art under 35 U.S.C.
jected, the applicant or patent owner 102(b) as in effect on March 15, 2013, and
may submit an appropriate oath or the inventions defined by the claims in
declaration to establish invention of the application or patent under reex-
the subject matter of the rejected amination and by the claims in the
claim prior to the effective date of the patent or published application are not
reference or activity on which the re- identical but are not patentably dis-
jection is based. The effective date of a tinct, and the inventions are owned by
U.S. patent, U.S. patent application the same party, the applicant or owner
publication, or international applica- of the patent under reexamination may
tion publication under PCT Article disqualify the patent or patent applica-
21(2) is the earlier of its publication tion publication as prior art. The pat-
date or the date that it is effective as ent or patent application publication
a reference under 35 U.S.C. 102(e) as in can be disqualified as prior art by sub-
effect on March 15, 2013. Prior inven- mission of:
tion may not be established under this (1) A terminal disclaimer in accord-
section in any country other than the ance with § 1.321(c); and
United States, a NAFTA country, or a (2) An oath or declaration stating
WTO member country. Prior invention that the application or patent under
may not be established under this sec- reexamination and patent or published
tion before December 8, 1993, in a application are currently owned by the
NAFTA country other than the United same party, and that the inventor
States, or before January 1, 1996, in a named in the application or patent
WTO member country other than a under reexamination is the prior inven-
NAFTA country. Prior invention may tor under 35 U.S.C. 104 as in effect on
not be established under this section if March 15, 2013.
either: (d) The provisions of this section
(1) The rejection is based upon a U.S. apply to any application for patent and
patent or U.S. patent application publi- to any patent issuing thereon, that
cation of a pending or patented appli- contains, or contained at any time:
cation naming another inventor which (1) A claim to an invention that has
claims interfering subject matter as an effective filing date as defined in
defined in § 41.203(a) of this chapter, in § 1.109 that is before March 16, 2013; or
which case an applicant may suggest (2) A specific reference under 35
an interference pursuant to § 41.202(a) U.S.C. 120, 121, 365(c), or 386(c) to any
of this chapter; or patent or application that contains, or
(2) The rejection is based upon a stat- contained at any time, a claim to an
utory bar. invention that has an effective filing
(b) The showing of facts for an oath date as defined in § 1.109 that is before
or declaration under paragraph (a) of March 16, 2013.
107
§ 1.132 37 CFR Ch. I (7–1–16 Edition)
(e) In an application for patent to TIME FOR REPLY BY APPLICANT;

which the provisions of § 1.130 apply, ABANDONMENT OF APPLICATION
and to any patent issuing thereon, the
provisions of this section are applica- AUTHORITY: Secs. 1.135 to 1.138 also issued
ble only with respect to a rejection under 35 U.S.C. 133.
under 35 U.S.C. 102(g) as in effect on
March 15, 2013. § 1.134 Time period for reply to an Of-
fice action.
[78 FR 11058, Feb. 14, 2013, as amended at 78
FR 62405, Oct. 21, 2013; 80 FR 17963, Apr. 2, An Office action will notify the appli-
2015] cant of any non-statutory or shortened
statutory time period set for reply to
§ 1.132 Affidavits or declarations tra- an Office action. Unless the applicant
versing rejections or objections. is notified in writing that a reply is re-
When any claim of an application or quired in less than six months, a max-
a patent under reexamination is re- imum period of six months is allowed.
jected or objected to, any evidence sub- [62 FR 53194, Oct. 10, 1997]
mitted to traverse the rejection or ob-
jection on a basis not otherwise pro- § 1.135 Abandonment for failure to
vided for must be by way of an oath or reply within time period.
declaration under this section.
(a) If an applicant of a patent appli-
[65 FR 57057, Sept. 20, 2000] cation fails to reply within the time
period provided under § 1.134 and § 1.136,
INTERVIEWS the application will become abandoned
unless an Office action indicates other-
§ 1.133 Interviews. wise.
(a)(1) Interviews with examiners con- (b) Prosecution of an application to
cerning applications and other matters save it from abandonment pursuant to
pending before the Office must be con- paragraph (a) of this section must in-
ducted on Office premises and within clude such complete and proper reply
Office hours, as the respective exam- as the condition of the application may
iners may designate. Interviews will require. The admission of, or refusal to
not be permitted at any other time or admit, any amendment after final re-
place without the authority of the Di- jection or any amendment not respon-
rector. sive to the last action, or any related
(2) An interview for the discussion of proceedings, will not operate to save
the patentability of a pending applica- the application from abandonment.
tion will not occur before the first Of- (c) When reply by the applicant is a
fice action, unless the application is a bona fide attempt to advance the appli-
continuing or substitute application or cation to final action, and is substan-
the examiner determines that such an tially a complete reply to the non-final
interview would advance prosecution of Office action, but consideration of
the application. some matter or compliance with some
(3) The examiner may require that an requirement has been inadvertently
interview be scheduled in advance. omitted, applicant may be given a new
(b) In every instance where reconsid- time period for reply under § 1.134 to
eration is requested in view of an inter- supply the omission.
view with an examiner, a complete [62 FR 53194, Oct. 10, 1997]
written statement of the reasons pre-
sented at the interview as warranting § 1.136 Extensions of time.
favorable action must be filed by the
applicant. An interview does not re- (a)(1) If an applicant is required to
move the necessity for reply to Office reply within a nonstatutory or short-
actions as specified in §§ 1.111 and 1.135. ened statutory time period, applicant
may extend the time period for reply
(35 U.S.C. 132) up to the earlier of the expiration of
any maximum period set by statute or
[24 FR 10332, Dec. 22, 1959, as amended at 62

FR 53194, Oct. 10, 1997; 65 FR 54674, Sept. 8, five months after the time period set
2000; 70 FR 56128, Sept. 26, 2005] for reply, if a petition for an extension
108
of time and the fee set in § 1.17(a) are riod for reply will be extended only for
filed, unless: sufficient cause and for a reasonable
(i) Applicant is notified otherwise in time specified. Any request for an ex-
an Office action; tension of time under this paragraph
(ii) The reply is a reply brief sub- must be filed on or before the day on
mitted pursuant to § 41.41 of this title; which such reply is due, but the mere
(iii) The reply is a request for an oral filing of such a request will not effect
hearing submitted pursuant to § 41.47(a) any extension under this paragraph. In
of this title; no situation can any extension carry
(iv) The reply is to a decision by the the date on which reply is due beyond
Patent Trial and Appeal Board pursu- the maximum time period set by stat-
ant to § 41.50 or § 41.52 of this chapter or ute. Any request under this paragraph
to § 90.3 of this chapter; or must be accompanied by the petition
(v) The application is involved in a fee set forth in § 1.17(g).
contested case (§ 41.101(a) of this title) (c) If an applicant is notified in a
or a derivation proceeding (§ 42.4(b) of ‘‘Notice of Allowability’’ that an appli-
this title). cation is otherwise in condition for al-
(2) The date on which the petition lowance, the following time periods are
and the fee have been filed is the date not extendable if set in the ‘‘Notice of
for purposes of determining the period Allowability’’ or in an Office action
of extension and the corresponding having a mail date on or after the mail
amount of the fee. The expiration of date of the ‘‘Notice of Allowability’’:
the time period is determined by the (1) The period for submitting the in-
amount of the fee paid. A reply must be ventor’s oath or declaration;
filed prior to the expiration of the pe- (2) The period for submitting formal
riod of extension to avoid abandonment drawings set under § 1.85(c); and
of the application (§ 1.135), but in no (3) The period for making a deposit
situation may an applicant reply later set under § 1.809(c).
than the maximum time period set by (d) See § 1.550(c) for extensions of
statute, or be granted an extension of time in ex parte reexamination pro-
time under paragraph (b) of this sec- ceedings, § 1.956 for extensions of time
tion when the provisions of paragraph in inter partes reexamination pro-
(a) of this section are available. ceedings; §§ 41.4(a) and 41.121(a)(3) of
(3) A written request may be sub- this chapter for extensions of time in
mitted in an application that is an au- contested cases before the Patent Trial
thorization to treat any concurrent or and Appeal Board; § 42.5(c) of this chap-
future reply, requiring a petition for an ter for extensions of time in trials be-
extension of time under this paragraph fore the Patent Trial and Appeal
for its timely submission, as incor- Board; and § 90.3 of this chapter for ex-
porating a petition for extension of tensions of time to appeal to the U.S.
time for the appropriate length of Court of Appeals for the Federal Cir-
time. An authorization to charge all cuit or to commence a civil action.
required fees, fees under § 1.17, or all re-
quired extension of time fees will be [62 FR 53194, Oct. 10, 1997, as amended at 65
treated as a constructive petition for FR 54674, Sept. 8, 2000; 65 FR 76773, Dec. 7,
2000; 66 FR 21092, Apr. 27, 2001; 69 FR 50000,
an extension of time in any concurrent
Aug. 12, 2004; 69 FR 56543, Sept. 21, 2004; 70 FR
or future reply requiring a petition for 3891, Jan. 27, 2005; 72 FR 46842, Aug. 21, 2007;
an extension of time under this para- 74 FR 52691, Oct. 14, 2009; 77 FR 46625, Aug. 6,
graph for its timely submission. Sub- 2012; 77 FR 48821, Aug. 14, 2012; 78 FR 62405,
mission of the fee set forth in § 1.17(a) Oct. 21, 2013]
will also be treated as a constructive
petition for an extension of time in any § 1.137 Revival of abandoned applica-
concurrent reply requiring a petition tion, or terminated or limited reex-
for an extension of time under this amination prosecution.
paragraph for its timely submission. (a) Revival on the basis of uninten-
(b) When a reply cannot be filed with- tional delay. If the delay in reply by ap-
in the time period set for such reply plicant or patent owner was uninten-
and the provisions of paragraph (a) of tional, a petition may be filed pursuant
this section are not available, the pe- to this section to revive an abandoned
109
§ 1.137 37 CFR Ch. I (7–1–16 Edition)
application or a reexamination pros- § 1.321 dedicating to the public a ter-

ecution terminated under § 1.550(d) or minal part of the term of any patent
§ 1.957(b) or limited under § 1.957(c). granted thereon equivalent to the less-
(b) Petition requirements. A grantable er of:
petition pursuant to this section must (i) The period of abandonment of the
be accompanied by: application; or
(1) The reply required to the out- (ii) The period extending beyond
standing Office action or notice, unless twenty years from the date on which
previously filed; the application for the patent was filed
(2) The petition fee as set forth in in the United States or, if the applica-
§ 1.17(m); tion contains a specific reference to an
(3) Any terminal disclaimer (and fee earlier filed application(s) under 35
as set forth in § 1.20(d)) required pursu- U.S.C. 120, 121, 365(c), or 386(c) from the
ant to paragraph (d) of this section; date on which the earliest such appli-
and cation was filed.
(4) A statement that the entire delay (2) Any terminal disclaimer pursuant
in filing the required reply from the to paragraph (d)(1) of this section must
due date for the reply until the filing of also apply to any patent granted on a
a grantable petition pursuant to this continuing utility or plant application
section was unintentional. The Direc- filed before June 8, 1995, or a con-
tor may require additional information tinuing design application, that con-
where there is a question whether the tains a specific reference under 35
delay was unintentional. U.S.C. 120, 121, 365(c), or 386(c) to the
(c) Reply. In an application aban- application for which revival is sought.
doned under § 1.57(a), the reply must in- (3) The provisions of paragraph (d)(1)
clude a copy of the specification and of this section do not apply to applica-
any drawings of the previously filed ap- tions for which revival is sought solely
plication. In an application or patent for purposes of copendency with a util-
abandoned for failure to pay the issue ity or plant application filed on or
fee or any portion thereof, the required after June 8, 1995, to reissue applica-
reply must include payment of the tions, or to reexamination proceedings.
issue fee or any outstanding balance. (e) Request for reconsideration. Any re-
In an application abandoned for failure quest for reconsideration or review of a
to pay the publication fee, the required decision refusing to revive an aban-
reply must include payment of the pub- doned application, or a terminated or
lication fee. In a nonprovisional appli- limited reexamination prosecution,
cation abandoned for failure to pros- upon petition filed pursuant to this
ecute, the required reply may be met section, to be considered timely, must
by the filing of a continuing applica- be filed within two months of the deci-
tion. In a nonprovisional utility or sion refusing to revive or within such
plant application filed on or after June time as set in the decision. Unless a de-
8, 1995, abandoned after the close of cision indicates otherwise, this time
prosecution as defined in § 1.114(b), the period may be extended under:
required reply may also be met by the (1) The provisions of § 1.136 for an
filing of a request for continued exam- abandoned application;
ination in compliance with § 1.114. (2) The provisions of § 1.550(c) for a
(d) Terminal disclaimer. (1) Any peti- terminated ex parte reexamination
tion to revive pursuant to this section prosecution, where the ex parte reexam-
in a design application must be accom- ination was filed under § 1.510; or
panied by a terminal disclaimer and fee (3) The provisions of § 1.956 for a ter-
as set forth in § 1.321 dedicating to the minated inter partes reexamination
public a terminal part of the term of prosecution or an inter partes reexam-
any patent granted thereon equivalent ination limited as to further prosecu-
to the period of abandonment of the ap- tion, where the inter partes reexamina-
plication. Any petition to revive pursu- tion was filed under § 1.913.
ant to this section in either a utility or (f) Abandonment for failure to notify
plant application filed before June 8, the Office of a foreign filing. A nonprovi-
1995, must be accompanied by a ter- sional application abandoned pursuant

minal disclaimer and fee as set forth in to 35 U.S.C. 122(b)(2)(B)(iii) for failure
110
to timely notify the Office of the filing the application from the publication
of an application in a foreign country process. Applicants should expect that
or under a multinational treaty that the petition will not be granted and the
requires publication of applications application will be published in regular
eighteen months after filing, may be course unless such declaration of ex-
revived pursuant to this section. The press abandonment and petition are re-
reply requirement of paragraph (c) of ceived by the appropriate officials
this section is met by the notification more than four weeks prior to the pro-
of such filing in a foreign country or jected date of publication.
under a multinational treaty, but the (d) An applicant seeking to abandon
filing of a petition under this section an application filed under 35 U.S.C.
will not operate to stay any period for 111(a) and § 1.53(b) on or after December
reply that may be running against the 8, 2004, to obtain a refund of the search
application. fee and excess claims fee paid in the
(g) Provisional applications. A provi- application, must submit a declaration
sional application, abandoned for fail- of express abandonment by way of a pe-
ure to timely respond to an Office re- tition under this paragraph before an
quirement, may be revived pursuant to examination has been made of the ap-
this section. Subject to the provisions plication. The date indicated on any
of 35 U.S.C. 119(e)(3) and § 1.7(b), a pro- certificate of mailing or transmission
visional application will not be re- under § 1.8 will not be taken into ac-
garded as pending after twelve months count in determining whether a peti-
from its filing date under any cir- tion under § 1.138(d) was filed before an
cumstances. examination has been made of the ap-
[78 FR 62405, Oct. 21, 2013, as amended at 80
plication. If a request for refund of the
FR 17963, Apr. 2, 2015] search fee and excess claims fee paid in
the application is not filed with the
§ 1.138 Express abandonment. declaration of express abandonment
(a) An application may be expressly under this paragraph or within two
abandoned by filing a written declara- months from the date on which the
tion of abandonment identifying the declaration of express abandonment
application in the United States Pat- under this paragraph was filed, the Of-
ent and Trademark Office. Express fice may retain the entire search fee
abandonment of the application may and excess claims fee paid in the appli-
not be recognized by the Office before cation. This two-month period is not
the date of issue or publication unless extendable. If a petition and declara-
tion of express abandonment under this
it is actually received by appropriate
paragraph are not filed before an exam-
officials in time to act.
ination has been made of the applica-
(b) A written declaration of abandon-
tion, the Office will not refund any
ment must be signed by a party au-
part of the search fee and excess claims
thorized under § 1.33(b)(1) or (b)(3) to
fee paid in the application except as
sign a paper in the application, except
provided in § 1.26.
as otherwise provided in this para-
graph. A registered attorney or agent, [65 FR 54674, Sept. 8, 2000, as amended at 65
not of record, who acts in a representa- FR 57058, Sept. 20, 2000; 71 FR 12284, Mar. 10,
tive capacity under the provisions of 2006; 78 FR 62406, Oct. 21, 2013]
§ 1.34 when filing a continuing applica- § 1.139 [Reserved]
tion, may expressly abandon the prior
application as of the filing date grant- JOINDER OF INVENTIONS IN ONE
ed to the continuing application. APPLICATION; RESTRICTION
(c) An applicant seeking to abandon
an application to avoid publication of AUTHORITY: Secs. 1.141 to 1.147 also issued
the application (see § 1.211(a)(1)) must under 35 U.S.C. 121.
submit a declaration of express aban-
donment by way of a petition under § 1.141 Different inventions in one na-
this paragraph including the fee set tional application.
forth in § 1.17(h) in sufficient time to (a) Two or more independent and dis-
permit the appropriate officials to rec- tinct inventions may not be claimed in
ognize the abandonment and remove one national application, except that
111
§ 1.142 37 CFR Ch. I (7–1–16 Edition)
more than one species of an invention, or modification of the requirement,

not to exceed a reasonable number, giving the reasons therefor. (See
may be specifically claimed in different § 1.111.) In requesting reconsideration
claims in one national application, pro- the applicant must indicate a provi-
vided the application also includes an sional election of one invention for
allowable claim generic to all the prosecution, which invention shall be
claimed species and all the claims to the one elected in the event the re-
species in excess of one are written in quirement becomes final The require-
dependent form (§ 1.75) or otherwise in- ment for restriction will be reconsid-
clude all the limitations of the generic ered on such a request. If the require-
claim. ment is repeated and made final the ex-
(b) Where claims to all three cat- aminer will at the same time act on
egories, product, process of making, the claims to the invention elected.
and process of use, are included in a na-
tional application, a three way require- § 1.144 Petition from requirement for
ment for restriction can only be made restriction.
where the process of making is distinct After a final requirement for restric-
from the product. If the process of tion, the applicant, in addition to mak-
making and the product are not dis- ing any reply due on the remainder of
tinct, the process of using may be the action, may petition the Director
joined with the claims directed to the to review the requirement. Petition
product and the process of making the may be deferred until after final action
product even though a showing of dis- on or allowance of claims to the inven-
tinctness between the product and tion elected, but must be filed not later
process of using the product can be than appeal. A petition will not be con-
made. sidered if reconsideration of the re-
quirement was not requested (see
[52 FR 20046, May 28, 1987]
§ 1.181).
§ 1.142 Requirement for restriction. [62 FR 53195, Oct. 10, 1997]
(a) If two or more independent and
§ 1.145 Subsequent presentation of
distinct inventions are claimed in a claims for different invention.
single application, the examiner in an
Office action will require the applicant If, after an Office action on an appli-
in the reply to that action to elect an cation, the applicant presents claims
invention to which the claims will be directed to an invention distinct from
restricted, this official action being and independent of the invention pre-
called a requirement for restriction viously claimed, the applicant will be
(also known as a requirement for divi- required to restrict the claims to the
sion). Such requirement will normally invention previously claimed if the
be made before any action on the mer- amendment is entered, subject to re-
its; however, it may be made at any consideration and review as provided in
time before final action. §§ 1.143 and 1.144.
(b) Claims to the invention or inven- [74 FR 52691, Oct. 14, 2009]
tions not elected, if not canceled, are
nevertheless withdrawn from further § 1.146 Election of species.
consideration by the examiner by the In the first action on an application
election, subject however to reinstate- containing a generic claim to a generic
ment in the event the requirement for invention (genus) and claims to more
restriction is withdrawn or overruled. than one patentably distinct species
[24 FR 10332, Dec. 22, 1959, as amended at 62 embraced thereby, the examiner may
FR 53195, Oct. 10, 1997; 72 FR 46842, Aug. 21, require the applicant in the reply to
2007; 74 FR 52691, Oct. 14, 2009] that action to elect a species of his or
her invention to which his or her claim
§ 1.143 Reconsideration of require- will be restricted if no claim to the
ment. genus is found to be allowable. How-
If the applicant disagrees with the re- ever, if such application contains
quirement for restriction, he may re- claims directed to more than a reason-
quest reconsideration and withdrawal able number of species, the examiner
112
may require restriction of the claims claim is neither required nor per-
to not more than a reasonable number mitted.
of species before taking further action (b) The inventor’s oath or declaration
in the application. must comply with the requirements of
§ 1.63, or comply with the requirements
[62 FR 53195, Oct. 10, 1997]
of § 1.64 for a substitute statement.
DESIGN PATENTS (35 U.S.C. 6, Pub. L. 97–247)
§ 1.151 Rules applicable. [24 FR 10332, Dec. 22, 1959, as amended at 29

FR 18503, Dec. 29, 1964; 48 FR 2712, Jan. 20,
The rules relating to applications for 1983; 77 FR 48821, Aug. 14, 2012]
patents for other inventions or discov-
eries are also applicable to applications § 1.154 Arrangement of application ele-
for patents for designs except as other- ments in a design application.
wise provided. (a) The elements of the design appli-
cation, if applicable, should appear in
(35 U.S.C. 171)
the following order:
§ 1.152 Design drawings. (1) Design application transmittal
form.
The design must be represented by a (2) Fee transmittal form.
drawing that complies with the re- (3) Application data sheet (see § 1.76).
quirements of § 1.84 and must contain a (4) Specification.
sufficient number of views to con- (5) Drawings or photographs.
stitute a complete disclosure of the ap- (6) The inventor’s oath or declaration
pearance of the design. Appropriate (see § 1.153(b)).
and adequate surface shading should be (b) The specification should include
used to show the character or contour the following sections in order:
of the surfaces represented. Solid black (1) Preamble, stating the name of the
surface shading is not permitted except applicant, title of the design, and a
when used to represent the color black brief description of the nature and in-
as well as color contrast. Broken lines tended use of the article in which the
may be used to show visible environ- design is embodied.
mental structure, but may not be used (2) Cross-reference to related applica-
to show hidden planes and surfaces tions (unless included in the applica-
that cannot be seen through opaque tion data sheet).
materials. Alternate positions of a de- (3) Statement regarding federally
sign component, illustrated by full and sponsored research or development.
broken lines in the same view are not (4) Description of the figure or fig-
permitted in a design drawing. Photo- ures of the drawing.
graphs and ink drawings are not per- (5) Feature description.
mitted to be combined as formal draw- (6) A single claim.
ings in one application. Photographs (c) The text of the specification sec-
submitted in lieu of ink drawings in de- tions defined in paragraph (b) of this
sign patent applications must not dis- section, if applicable, should be pre-
close environmental structure but ceded by a section heading in uppercase
must be limited to the design claimed letters without underlining or bold
for the article. type.
[65 FR 54674, Sept. 8, 2000] [65 FR 54674, Sept. 8, 2000, as amended at 77
FR 48821, Aug. 14, 2012]
§ 1.153 Title, description and claim,
oath or declaration. § 1.155 Expedited examination of de-
(a) The title of the design must des- sign applications.
ignate the particular article. No de- (a) The applicant may request that
scription, other than a reference to the the Office expedite the examination of
drawing, is ordinarily required. The a design application. To qualify for ex-
claim shall be in formal terms to the pedited examination:
ornamental design for the article (1) The application must include
(specifying name) as shown, or as drawings in compliance with § 1.84, or

shown and described. More than one for an international design application
113
§ 1.161 37 CFR Ch. I (7–1–16 Edition)
that designates the United States, reproduced. For a newly found plant,
must have been published pursuant to the specification must particularly
Hague Agreement Article 10(3); point out the location and character of
(2) The applicant must have con- the area where the plant was discov-
ducted a preexamination search; and ered.
(3) The applicant must file a request (b) The elements of the plant applica-
for expedited examination including: tion, if applicable, should appear in the
(i) The fee set forth in § 1.17(k); and following order:
(ii) A statement that a (1) Plant application transmittal
preexamination search was conducted. form.
The statement must also indicate the (2) Fee transmittal form.
field of search and include an informa-
(3) Application data sheet (see § 1.76).
tion disclosure statement in compli-
ance with § 1.98. (4) Specification.
(b) The Office will not examine an ap- (5) Drawings (in duplicate).
plication that is not in condition for (6) The inventor’s oath or declaration
examination (e.g., missing basic filing (§ 1.162).
fee) even if the applicant files a request (c) The specification should include
for expedited examination under this the following sections in order:
section. (1) Title of the invention, which may
include an introductory portion stating
FR 17963, Apr. 2, 2015] the name, citizenship, and residence of
the applicant.
PLANT PATENTS (2) Cross-reference to related applica-
tions (unless included in the applica-
§ 1.161 Rules applicable. tion data sheet).
The rules relating to applications for (3) Statement regarding federally
patent for other inventions or discov- sponsored research or development.
eries are also applicable to applications (4) Latin name of the genus and spe-
for patents for plants except as other- cies of the plant claimed.
wise provided. (5) Variety denomination.
(6) Background of the invention.
§ 1.162 Applicant, oath or declaration.
(7) Brief summary of the invention.
The inventor named for a plant pat- (8) Brief description of the drawing.
ent application must be the person who
(9) Detailed botanical description.
has invented or discovered and
(10) A single claim.
asexually reproduced the new and dis-
tinct variety of plant for which a pat- (11) Abstract of the disclosure.
ent is sought. The inventor’s oath or (d) The text of the specification or
declaration, in addition to the aver- sections defined in paragraph (c) of this
ments required by § 1.63 or § 1.64, must section, if applicable, should be pre-
state that the inventor has asexually ceded by a section heading in upper
reproduced the plant. Where the plant case, without underlining or bold type.
is a newly found plant, the inventor’s [65 FR 54675, Sept. 8, 2000, as amended at 77
oath or declaration must also state FR 48821, Aug. 14, 2012]
that it was found in a cultivated area.
[77 FR 48821, Aug. 14, 2012] § 1.164 Claim.
The claim shall be in formal terms to
§ 1.163 Specification and arrangement the new and distinct variety of the
of application elements in a plant specified plant as described and illus-
application.
trated, and may also recite the prin-
(a) The specification must contain as cipal distinguishing characteristics.
full and complete a disclosure as pos- More than one claim is not permitted.
sible of the plant and the characteris-
tics thereof that distinguish the same (35 U.S.C. 162)
over related known varieties, and its
antecedents, and must particularly § 1.165 Plant drawings.
point out where and in what manner (a) Plant patent drawings should be
the variety of plant has been asexually artistically and competently executed
114
and must comply with the require- A reissue application must be accom-
ments of § 1.84. View numbers and ref- panied by the written consent of all as-
erence characters need not be em- signees, if any, currently owning an
ployed unless required by the exam- undivided interest in the patent. All
iner. The drawing must disclose all the assignees consenting to the reissue
distinctive characteristics of the plant must establish their ownership in the
capable of visual representation. patent by filing in the reissue applica-
(b) The drawings may be in color. tion a submission in accordance with
The drawing must be in color if color is the provisions of § 3.73(c) of this chap-
a distinguishing characteristic of the ter.
new variety. Two copies of color draw- (b) A reissue will be granted to the
ings or photographs must be sub- original patentee, his legal representa-
mitted. tives or assigns as the interest may ap-
[58 FR 38726, July 20, 1993, as amended at 65
pear.
FR 57058, Sept. 20, 2000; 69 FR 56543, Sept. 21, [77 FR 48821, Aug. 14, 2012]
2004]
§ 1.173 Reissue specification, draw-
§ 1.166 Specimens. ings, and amendments.
The applicant may be required to fur- (a) Contents of a reissue application.
nish specimens of the plant, or its flow- An application for reissue must con-
er or fruit, in a quantity and at a time tain the entire specification, including
in its stage of growth as may be des- the claims, and the drawings of the
ignated, for study and inspection. Such patent. No new matter shall be intro-
specimens, properly packed, must be duced into the application. No reissue
forwarded in conformity with instruc- patent shall be granted enlarging the
tions furnished to the applicant. When scope of the claims of the original pat-
it is not possible to forward such speci- ent unless applied for within two years
mens, plants must be made available from the grant of the original patent,
for official inspection where grown. pursuant to 35 U.S.C. 251.
(35 U.S.C. 114, 161) (1) Specification, including claims. The
entire specification, including the
§ 1.167 Examination. claims, of the patent for which reissue
Applications may be submitted by is requested must be furnished in the
the Patent and Trademark Office to form of a copy of the printed patent, in
the Department of Agriculture for double column format, each page on
study and report. only one side of a single sheet of paper.
If an amendment of the reissue applica-
[62 FR 53196, Oct. 10, 1997] tion is to be included, it must be made
pursuant to paragraph (b) of this sec-
REISSUES tion. The formal requirements for pa-
pers making up the reissue application
AUTHORITY: Secs. 1.171 to 1.179 also issued
other than those set forth in this sec-
tion are set out in § 1.52. Additionally,
§ 1.171 Application for reissue. a copy of any disclaimer (§ 1.321), cer-
tificate of correction (§§ 1.322 through
An application for reissue must con-
1.324), or reexamination certificate
tain the same parts required for an ap-
(§ 1.570) issued in the patent must be in-
plication for an original patent, com-
cluded. (See also § 1.178).
plying with all the rules relating there-
(2) Drawings. Applicant must submit
to except as otherwise provided, and in
a clean copy of each drawing sheet of
addition, must comply with the re-
the printed patent at the time the re-
quirements of the rules relating to re-
issue application is filed. If such copy
issue applications.
complies with § 1.84, no further draw-
[62 FR 53196, Oct. 10, 1997] ings will be required. Where a drawing
of the reissue application is to include
§ 1.172 Reissue applicant. any changes relative to the patent
(a) The reissue applicant is the origi- being reissued, the changes to the
nal patentee, or the current patent drawing must be made in accordance

owner if there has been an assignment. with paragraph (b)(3) of this section.
115
§ 1.173 37 CFR Ch. I (7–1–16 Edition)
The Office will not transfer the draw- version of the sheet, even if only one
ings from the patent file to the reissue figure is amended. Amended figures
application. must be identified as ‘‘Amended,’’ and
(b) Making amendments in a reissue ap- any added figure must be identified as
plication. An amendment in a reissue ‘‘New.’’ In the event that a figure is
application is made either by phys- canceled, the figure must be sur-
ically incorporating the changes into rounded by brackets and identified as
the specification when the application ‘‘Canceled.’’ All changes to the draw-
is filed, or by a separate amendment ing(s) shall be explained, in detail, be-
paper. If amendment is made by incor- ginning on a separate sheet accom-
poration, markings pursuant to para- panying the papers including the
graph (d) of this section must be used. amendment to the drawings.
If amendment is made by an amend- (i) A marked-up copy of any amended
ment paper, the paper must direct that drawing figure, including annotations
specified changes be made, as follows: indicating the changes made, may be
(1) Specification other than the claims. included. The marked-up copy must be
Changes to the specification, other clearly labeled as ‘‘Annotated Marked-
than to the claims, must be made by up Drawings’’ and must be presented in
submission of the entire text of an the amendment or remarks section
added or rewritten paragraph, includ- that explains the change to the draw-
ing markings pursuant to paragraph (d) ings.
of this section, except that an entire (ii) A marked-up copy of any amend-
paragraph may be deleted by a state- ed drawing figure, including annota-
ment deleting the paragraph without tions indicating the changes made,
presentation of the text of the para- must be provided when required by the
graph. The precise point in the speci- examiner.
fication must be identified where any (c) Status of claims and support for
added or rewritten paragraph is lo- claim changes. Whenever there is an
cated. This paragraph applies whether amendment to the claims pursuant to
the amendment is submitted on paper paragraph (b) of this section, there
or compact disc (see §§ 1.52(e)(1) and must also be supplied, on pages sepa-
1.821(c), but not for discs submitted rate from the pages containing the
under § 1.821(e)). changes, the status (i.e., pending or
(2) Claims. An amendment paper must canceled), as of the date of the amend-
include the entire text of each claim ment, of all patent claims and of all
being changed by such amendment added claims, and an explanation of the
paper and of each claim being added by support in the disclosure of the patent
such amendment paper. For any claim for the changes made to the claims.
changed by the amendment paper, a (d) Changes shown by markings. Any
parenthetical expression ‘‘amended,’’ changes relative to the patent being re-
‘‘twice amended,’’ etc., should follow issued which are made to the specifica-
the claim number. Each changed pat- tion, including the claims, upon filing,
ent claim and each added claim must or by an amendment paper in the re-
include markings pursuant to para- issue application, must include the fol-
graph (d) of this section, except that a lowing markings:
patent claim or added claim should be (1) The matter to be omitted by re-
canceled by a statement canceling the issue must be enclosed in brackets; and
claim without presentation of the text (2) The matter to be added by reissue
of the claim. must be underlined, except for amend-
(3) Drawings. One or more patent ments submitted on compact discs
drawings shall be amended in the fol- (§§ 1.96 and 1.821(c)). Matter added by
lowing manner: Any changes to a pat- reissue on compact discs must be pre-
ent drawing must be submitted as a re- ceded with ‘‘<U>’’ and end with ‘‘</U>’’
placement sheet of drawings which to properly identify the material being
shall be an attachment to the amend- added.
ment document. Any replacement (e) Numbering of patent claims pre-
sheet of drawings must be in compli- served. Patent claims may not be re-
ance with § 1.84 and shall include all of numbered. The numbering of any claim
the figures appearing on the original added in the reissue application must
116
follow the number of the highest num- (1) The application does not seek to
bered patent claim. enlarge the scope of the claims of the
(f) Amendment of disclosure may be re- original patent; or
quired. The disclosure must be amend- (2) The application for the original
ed, when required by the Office, to cor- patent was filed under § 1.46 by the as-
rect inaccuracies of description and signee of the entire interest.
definition, and to secure substantial (d) If errors previously identified in
correspondence between the claims, the inventor’s oath or declaration for a
the remainder of the specification, and reissue application pursuant to para-
the drawings. graph (a) of this section are no longer
(g) Amendments made relative to the being relied upon as the basis for re-
patent. All amendments must be made issue, the applicant must identify an
relative to the patent specification, in- error being relied upon as the basis for
cluding the claims, and drawings, reissue.
which are in effect as of the date of fil- (e) The inventor’s oath or declaration
ing of the reissue application. for a reissue application required by
paragraph (a) of this section may be
[65 FR 54675, Sept. 8, 2000, as amended at 68 submitted under the provisions of
FR 38630, June 30, 2003; 69 FR 56543, Sept. 21,
§ 1.53(f), except that the provisions of
2004]
§ 1.53(f)(3) do not apply to a reissue ap-
§ 1.174 [Reserved] plication.
(f)(1) The requirement for the inven-
§ 1.175 Inventor’s oath or declaration tor’s oath or declaration for a con-
for a reissue application. tinuing reissue application that claims
the benefit under 35 U.S.C. 120, 121,
(a) The inventor’s oath or declaration
365(c), or 386(c) in compliance with
for a reissue application, in addition to
§ 1.78 of an earlier-filed reissue applica-
complying with the requirements of
tion may be satisfied by a copy of the
§ 1.63, § 1.64, or § 1.67, must also specifi-
inventor’s oath or declaration from the
cally identify at least one error pursu-
earlier-filed reissue application, pro-
ant to 35 U.S.C. 251 being relied upon as
vided that:
the basis for reissue and state that the
(i) The inventor, or each individual
applicant believes the original patent
who is a joint inventor of a claimed in-
to be wholly or partly inoperative or
vention, in the reissue application exe-
invalid by reason of a defective speci-
cuted an inventor’s oath or declaration
fication or drawing, or by reason of the
for the earlier-filed reissue application,
patentee claiming more or less than
except as provided for in § 1.64;
the patentee had the right to claim in
the patent. (ii) The continuing reissue applica-
tion does not seek to enlarge the scope
(b) If the reissue application seeks to
of the claims of the original patent; or
enlarge the scope of the claims of the
(iii) The application for the original
patent (a basis for the reissue is the
patent was filed under § 1.46 by the as-
patentee claiming less than the pat-
signee of the entire interest.
entee had the right to claim in the pat-
ent), the inventor’s oath or declaration (2) If all errors identified in the in-
for a reissue application must identify ventor’s oath or declaration from the
a claim that the application seeks to earlier-filed reissue application are no
broaden. A claim is a broadened claim longer being relied upon as the basis
if the claim is broadened in any re- for reissue, the applicant must identify
spect. an error being relied upon as the basis
for reissue.
(c) The inventor, or each individual
who is a joint inventor of a claimed in- (g) An oath or declaration filed at
vention, in a reissue application must any time pursuant to 35 U.S.C.
execute an oath or declaration for the 115(h)(1), will be placed in the file
reissue application, except as provided record of the reissue application, but
for in § 1.64, and except that the inven- may not necessarily be reviewed by the
tor’s oath or declaration for a reissue Office.
application may be signed by the as- [77 FR 48821, Aug. 14, 2012, as amended at 80
signee of the entire interest if: FR 17964, Apr. 2, 2015]
117
§ 1.176 37 CFR Ch. I (7–1–16 Edition)
§ 1.176 Examination of reissue. highest numbered original patent

claim.
(a) A reissue application will be ex-
amined in the same manner as a non- (c) If any one of the several reissue
reissue, non-provisional application, applications by itself fails to correct
and will be subject to all the require- an error in the original patent as re-
ments of the rules related to non-required by 35 U.S.C. 251 but is otherwise
issue applications. Applications for rein condition for allowance, the Office
issue will be acted on by the examiner may suspend action in the allowable
in advance of other applications. application until all issues are resolved
(b) Restriction between subject mat- as to at least one of the remaining re-
ter of the original patent claims and issue applications. The Office may also
previously unclaimed subject matter merge two or more of the multiple re-
may be required (restriction involving issue applications into a single reissue
only subject matter of the original pat- application. No reissue application
ent claims will not be required). If re- containing only unamended patent
striction is required, the subject mat- claims and not correcting an error in
ter of the original patent claims will be the original patent will be passed to
held to be constructively elected unless issue by itself.
a disclaimer of all the patent claims is [65 FR 54676, Sept. 8, 2000]
filed in the reissue application, which
disclaimer cannot be withdrawn by ap- § 1.178 Original patent; continuing
plicant. duty of applicant.
[65 FR 54676, Sept. 8, 2000] (a) The application for reissue of a
patent shall constitute an offer to sur-
§ 1.177 Issuance of multiple reissue render that patent, and the surrender
patents. shall take effect upon reissue of the
(a) The Office may reissue a patent as patent. Until a reissue application is
multiple reissue patents. If applicant granted, the original patent shall re-
files more than one application for the main in effect.
reissue of a single patent, each such ap- (b) In any reissue application before
plication must contain or be amended the Office, the applicant must call to
to contain in the first sentence of the the attention of the Office any prior or
specification a notice stating that concurrent proceedings in which the
more than one reissue application has patent (for which reissue is requested)
been filed and identifying each of the is or was involved, such as inter-
reissue applications by relationship, ferences or trials before the Patent
application number and filing date. Trial and Appeal Board, reissues, reex-
The Office may correct by certificate aminations, or litigations and the re-
of correction under § 1.322 any reissue sults of such proceedings (see also
patent resulting from an application to § 1.173(a)(1)).
which this paragraph applies that does [65 FR 54676, Sept. 8, 2000, as amended at 69
not contain the required notice. FR 56544, Sept. 21, 2004; 77 FR 46625, Aug. 6,
(b) If applicant files more than one 2012]
application for the reissue of a single
patent, each claim of the patent being § 1.179 [Reserved]
reissued must be presented in each of
the reissue applications as an amended, PETITIONS AND ACTION BY THE DIRECTOR
unamended, or canceled (shown in
brackets) claim, with each such claim AUTHORITY: 35 U.S.C. 6; 15 U.S.C. 1113, 1123.
bearing the same number as in the pat-
§ 1.181 Petition to the Director.
ent being reissued. The same claim of
the patent being reissued may not be (a) Petition may be taken to the Di-
presented in its original unamended rector:
form for examination in more than one (1) From any action or requirement
of such multiple reissue applications. of any examiner in the ex parte pros-
The numbering of any added claims in ecution of an application, or in ex parte
any of the multiple reissue applica- or inter partes prosecution of a reexam-

tions must follow the number of the ination proceeding which is not subject
118
to appeal to the Patent Trial and Ap- officials the determination of peti-
peal Board or to the court; tions.
(2) In cases in which a statute or the
rules specify that the matter is to be FR 18857, Nov. 26, 1969; 47 FR 41278, Sept. 17,
determined directly by or reviewed by 1982; 49 FR 48452, Dec. 12, 1984; 65 FR 54676,
the Director; and Sept. 8, 2000; 65 FR 76774, Dec. 7, 2000; 69 FR
(3) To invoke the supervisory author- 50000, Aug. 12, 2004; 77 FR 46625, Aug. 6, 2012]
ity of the Director in appropriate cir-
cumstances. For petitions involving ac- § 1.182 Questions not specifically pro-
tion of the Patent Trial and Appeal vided for.
Board, see § 41.3 of this title. All situations not specifically pro-
(b) Any such petition must contain a vided for in the regulations of this part
statement of the facts involved and the will be decided in accordance with the
point or points to be reviewed and the merits of each situation by or under
action requested. Briefs or memoranda, the authority of the Director, subject
if any, in support thereof should ac- to such other requirements as may be
company or be embodied in the peti- imposed, and such decision will be
tion; and where facts are to be proven, communicated to the interested parties
the proof in the form of affidavits or
in writing. Any petition seeking a deci-
declarations (and exhibits, if any) must
sion under this section must be accom-
accompany the petition.
panied by the petition fee set forth in
(c) When a petition is taken from an
§ 1.17(f).
action or requirement of an examiner
in the ex parte prosecution of an appli- [69 FR 56544, Sept. 21, 2004]
cation, or in the ex parte or inter partes
prosecution of a reexamination pro- § 1.183 Suspension of rules.
ceeding, it may be required that there In an extraordinary situation, when
have been a proper request for recon- justice requires, any requirement of
sideration (§ 1.111) and a repeated ac- the regulations in this part which is
tion by the examiner. The examiner not a requirement of the statutes may
may be directed by the Director to fur- be suspended or waived by the Director
nish a written statement, within a or the Director’s designee, sua sponte,
specified time, setting forth the rea-
or on petition of the interested party,
sons for his or her decision upon the
subject to such other requirements as
matters averred in the petition, sup-
plying a copy to the petitioner. may be imposed. Any petition under
this section must be accompanied by
(d) Where a fee is required for a peti-
tion to the Director the appropriate the petition fee set forth in § 1.17(f).
section of this part will so indicate. If [69 FR 56544, Sept. 21, 2004]
any required fee does not accompany
the petition, the petition will be dis- § 1.184 [Reserved]
missed.
(e) Oral hearing will not be granted APPEAL TO THE PATENT TRIAL AND
except when considered necessary by APPEAL BOARD
the Director.
(f) The mere filing of a petition will AUTHORITY: Secs. 1.191 to 1.198 also issued
not stay any period for reply that may under 35 U.S.C. 134.
be running against the application, nor
act as a stay of other proceedings. Any § 1.191 Appeal to Patent Trial and Ap-
peal Board.
petition under this part not filed with-
in two months of the mailing date of Appeals to the Patent Trial and Ap-
the action or notice from which relief peal Board under 35 U.S.C. 134(a) and
is requested may be dismissed as un- (b) are conducted according to part 41
timely, except as otherwise provided. of this title.
This two-month period is not extend-
[77 FR 46625, Aug. 6, 2012]
able.
(g) The Director may delegate to ap-

propriate Patent and Trademark Office
119
§§ 1.192–1.196 37 CFR Ch. I (7–1–16 Edition)
§§ 1.192–1.196 [Reserved] § 1.211 Publication of applications.

(a) Each U.S. national application for
§ 1.197 Termination of proceedings. patent filed in the Office under 35
(a) Proceedings on an application are U.S.C. 111(a) and each international ap-
considered terminated by the dismissal plication in compliance with 35 U.S.C.
of an appeal or the failure to timely 371 will be published promptly after the
file an appeal to the court or a civil ac- expiration of a period of eighteen
tion except: months from the earliest filing date for
(1) Where claims stand allowed in an which a benefit is sought under title 35,
application; or United States Code, unless:
(2) Where the nature of the decision (1) The application is recognized by
requires further action by the exam- the Office as no longer pending;
iner. (2) The application is national secu-
rity classified (see § 5.2(c)), subject to a
(b) The date of termination of pro-
secrecy order under 35 U.S.C. 181, or
ceedings on an application is the date
under national security review;
on which the appeal is dismissed or the
(3) The application has issued as a
date on which the time for appeal to patent in sufficient time to be removed
the U.S. Court of Appeals for the Fed- from the publication process; or
eral Circuit or review by civil action (4) The application was filed with a
(§ 90.3 of this chapter) expires in the ab- nonpublication request in compliance
sence of further appeal or review. If an with § 1.213(a).
appeal to the U.S. Court of Appeals for (b) Provisional applications under 35
the Federal Circuit or a civil action U.S.C. 111(b) shall not be published, and
has been filed, proceedings on an appli- design applications under 35 U.S.C.
cation are considered terminated when chapter 16, international design appli-
the appeal or civil action is termi- cations under 35 U.S.C. chapter 38, and
nated. A civil action is terminated reissue applications under 35 U.S.C.
when the time to appeal the judgment chapter 25 shall not be published under
expires. An appeal to the U.S. Court of this section.
Appeals for the Federal Circuit, wheth- (c) An application filed under 35
er from a decision of the Board or a U.S.C. 111(a) will not be published until
judgment in a civil action, is termi- it includes the basic filing fee (§ 1.16(a)
nated when the mandate is issued by or § 1.16(c)) and any English translation
the Court. required by § 1.52(d). The Office may
delay publishing any application until
[78 FR 75252, Dec. 11, 2013]
it includes any application size fee re-
§ 1.198 Reopening after a final deci- quired by the Office under § 1.16(s) or
sion of the Patent Trial and Appeal § 1.492(j), a specification having papers
Board. in compliance with § 1.52 and an ab-
stract (§ 1.72(b)), drawings in compli-
When a decision by the Patent Trial
ance with § 1.84, a sequence listing in
and Appeal Board on appeal has be-
compliance with §§ 1.821 through 1.825
come final for judicial review, prosecu- (if applicable), and the inventor’s oath
tion of the proceeding before the pri- or declaration or application data
mary examiner will not be reopened or sheet containing the information speci-
reconsidered by the primary examiner fied in § 1.63(b).
except under the provisions of § 1.114 or (d) The Office may refuse to publish
§ 41.50 of this title without the written an application, or to include a portion
authority of the Director, and then of an application in the patent applica-
only for the consideration of matters tion publication (§ 1.215), if publication
not already adjudicated, sufficient of the application or portion thereof
cause being shown. would violate Federal or state law, or
[77 FR 46625, Aug. 6, 2012] if the application or portion thereof
contains offensive or disparaging mate-
PUBLICATION OF APPLICATIONS rial.
(e) The publication fee set forth in
SOURCE: 65 FR 57058, Sept. 20, 2000, unless § 1.18(d) must be paid in each applica-
otherwise noted. tion published under this section before
120
the patent will be granted. If an appli- graph (a) of this section subsequently
cation is subject to publication under files an application directed to the in-
this section, the sum specified in the vention disclosed in the application in
notice of allowance under § 1.311 will which the nonpublication request was
also include the publication fee which submitted in another country, or under
must be paid within three months from a multilateral international agree-
the date of mailing of the notice of al- ment, that requires publication of ap-
lowance to avoid abandonment of the plications eighteen months after filing,
application. This three-month period is the applicant must notify the Office of
not extendable. If the application is such filing within forty-five days after
not published under this section, the the date of the filing of such foreign or
publication fee (if paid) will be re- international application. The failure
funded. to timely notify the Office of the filing
of such foreign or international appli-
FR 3891, Jan. 27, 2005; 77 FR 48822, Aug. 14, cation shall result in abandonment of
2012, as amended at 80 FR 17964, Apr. 2, 2015] the application in which the non-
publication request was submitted (35
§ 1.213 Nonpublication request. U.S.C. 122(b)(2)(B)(iii)).
(a) If the invention disclosed in an
§ 1.215 Patent application publication.
application has not been and will not
be the subject of an application filed in (a) The publication of an application
another country, or under a multilat- under 35 U.S.C. 122(b) shall include a
eral international agreement, that re- patent application publication. The
quires publication of applications date of publication shall be indicated
eighteen months after filing, the appli- on the patent application publication.
cation will not be published under 35 The patent application publication will
U.S.C. 122(b) and § 1.211 provided: be based upon the specification and
(1) A request (nonpublication re- drawings deposited on the filing date of
quest) is submitted with the applica- the application, as well as the applica-
tion upon filing; tion data sheet and/or the inventor’s
(2) The request states in a con- oath or declaration. The patent appli-
spicuous manner that the application cation publication may also be based
is not to be published under 35 U.S.C. upon amendments to the specification
122(b); (other than the abstract or the claims)
(3) The request contains a certifi- that are reflected in a substitute speci-
cation that the invention disclosed in fication under § 1.125(b), amendments to
the application has not been and will the abstract under § 1.121(b), amend-
not be the subject of an application ments to the claims that are reflected
filed in another country, or under a in a complete claim listing under
multilateral international agreement, § 1.121(c), and amendments to the draw-
that requires publication at eighteen ings under § 1.121(d), provided that such
months after filing; and substitute specification or amendment
(4) The request is signed in compli- is submitted in sufficient time to be
ance with § 1.33(b). entered into the Office file wrapper of
(b) The applicant may rescind a non- the application before technical prep-
publication request at any time. A re- arations for publication of the applica-
quest to rescind a nonpublication re- tion have begun. Technical prepara-
quest under paragraph (a) of this sections for publication of an application
tion must: generally begin four months prior to
(1) Identify the application to which the projected date of publication. The
it is directed; patent application publication of an
(2) State in a conspicuous manner application that has entered the na-
that the request that the application is tional stage under 35 U.S.C. 371 may
not to be published under 35 U.S.C. also include amendments made during
122(b) is rescinded; and the international stage. See paragraph
(3) Be signed in compliance with (c) of this section for publication of an
§ 1.33(b). application based upon a copy of the
(c) If an applicant who has submitted application submitted via the Office
a nonpublication request under para- electronic filing system.
121
§ 1.217 37 CFR Ch. I (7–1–16 Edition)
(b) The patent application publica- § 1.217 Publication of a redacted copy

tion will include the name of the as- of an application.
signee, person to whom the inventor is (a) If an applicant has filed applica-
under an obligation to assign the in- tions in one or more foreign countries,
vention, or person who otherwise shows directly or through a multilateral
sufficient proprietary interest in the international agreement, and such for-
matter if that information is provided eign-filed applications or the descrip-
in the application data sheet in an ap- tion of the invention in such foreign-
plication filed under § 1.46. Assignee in- filed applications is less extensive than
formation may be included on the pat- the application or description of the in-
ent application publication in other ap- vention in the application filed in the
plications if the assignee information Office, the applicant may submit a re-
is provided in an application data sheet dacted copy of the application filed in
submitted in sufficient time to be en- the Office for publication, eliminating
any part or description of the inven-
tered into the Office file wrapper of the
tion that is not also contained in any
application before technical prepara-
of the corresponding applications filed
tions for publication of the application in a foreign country. The Office will
have begun. Providing assignee infor- publish the application as provided in
mation in the application data sheet § 1.215(a) unless the applicant files a re-
does not substitute for compliance dacted copy of the application in com-
with any requirement of part 3 of this pliance with this section within sixteen
chapter to have an assignment re- months after the earliest filing date for
corded by the Office. which a benefit is sought under title 35,
(c) At applicant’s option, the patent United States Code.
application publication will be based (b) The redacted copy of the applica-
upon the copy of the application (speci- tion must be submitted in compliance
fication, drawings, and the application with the Office electronic filing system
data sheet and/or the inventor’s oath requirements. The title of the inven-
or declaration) as amended, provided tion in the redacted copy of the appli-
that applicant supplies such a copy in cation must correspond to the title of
compliance with the Office electronic the application at the time the re-
filing system requirements within one dacted copy of the application is sub-
month of the mailing date of the first mitted to the Office. If the redacted
Office communication that includes a copy of the application does not com-
confirmation number for the applica- ply with the Office electronic filing
system requirements, the Office will
tion, or fourteen months of the earliest
publish the application as provided in
filing date for which a benefit is sought
§ 1.215(a).
under title 35, United States Code, (c) The applicant must also concur-
whichever is later. rently submit in paper (§ 1.52(a)) to be
(d) If the copy of the application sub- filed in the application:
mitted pursuant to paragraph (c) of (1) A certified copy of each foreign-
this section does not comply with the filed application that corresponds to
Office electronic filing system require- the application for which a redacted
ments, the Office will publish the ap- copy is submitted;
plication as provided in paragraph (a) (2) A translation of each such for-
of this section. If, however, the Office eign-filed application that is in a lan-
has not started the publication process, guage other than English, and a state-
the Office may use an untimely filed ment that the translation is accurate;
copy of the application supplied by the (3) A marked-up copy of the applica-
applicant under paragraph (c) of this tion showing the redactions in brack-
section in creating the patent applica- ets; and
tion publication. (4) A certification that the redacted
copy of the application eliminates only
[65 FR 57058, Sept. 20, 2000, as amended at 69 the part or description of the invention
FR 56544, Sept. 21, 2004; 77 FR 48822, Aug. 14, that is not contained in any applica-
2012] tion filed in a foreign country, directly

or through a multilateral international
122
agreement, that corresponds to the ap- § 1.219 Early publication.

plication filed in the Office.
Applications that will be published
(d) The Office will provide a copy of under § 1.211 may be published earlier
the complete file wrapper and contents than as set forth in § 1.211(a) at the re-
of an application for which a redacted quest of the applicant. Any request for
copy was submitted under this section early publication must be accompanied
to any person upon written request by the publication fee set forth in
pursuant to § 1.14(c)(2), unless applicant § 1.18(d). If the applicant does not sub-
complies with the requirements of mit a copy of the application in com-
paragraphs (d)(1), (d)(2), and (d)(3) of pliance with the Office electronic filing
this section. system requirements pursuant to
(1) Applicant must accompany the § 1.215(c), the Office will publish the ap-
submission required by paragraph (c) of plication as provided in § 1.215(a). No
this section with the following: consideration will be given to requests
(i) A copy of any Office correspond- for publication on a certain date, and
ence previously received by applicant such requests will be treated as a re-
including any desired redactions, and a quest for publication as soon as pos-
second copy of all Office correspond- sible.
ence previously received by applicant
showing the redacted material in § 1.221 Voluntary publication or re-
brackets; and publication of patent application
(ii) A copy of each submission pre- publication.
viously filed by the applicant including (a) Any request for publication of an
any desired redactions, and a second application filed before, but pending
copy of each submission previously on, November 29, 2000, and any request
filed by the applicant showing the re- for republication of an application pre-
dacted material in brackets. viously published under § 1.211, must in-
(2) In addition to providing the sub- clude a copy of the application in com-
mission required by paragraphs (c) and pliance with the Office electronic filing
(d)(1) of this section, applicant must: system requirements and be accom-
(i) Within one month of the date of panied by the publication fee set forth
mailing of any correspondence from in § 1.18(d) and the processing fee set
the Office, file a copy of such Office forth in § 1.17(i). If the request does not
correspondence including any desired comply with the requirements of this
redactions, and a second copy of such paragraph or the copy of the applica-
Office correspondence showing the re- tion does not comply with the Office
dacted material in brackets; and electronic filing system requirements,
(ii) With each submission by the ap- the Office will not publish the applica-
plicant, include a copy of such submis- tion and will refund the publication
sion including any desired redactions, fee.
and a second copy of such submission (b) The Office will grant a request for
showing the redacted material in a corrected or revised patent applica-
brackets. tion publication other than as provided
(3) Each submission under paragraph in paragraph (a) of this section only
(d)(1) or (d)(2) of this paragraph must when the Office makes a material mis-
also be accompanied by the processing take which is apparent from Office
fee set forth in § 1.17(i) and a certifi- records. Any request for a corrected or
cation that the redactions are limited revised patent application publication
to the elimination of material that is other than as provided in paragraph (a)
relevant only to the part or description of this section must be filed within two
of the invention that was not con- months from the date of the patent ap-
tained in the redacted copy of the application publication. This period is
plication submitted for publication. not extendable.
(e) The provisions of § 1.8 do not apply
to the time periods set forth in this

section.
123
§ 1.248 37 CFR Ch. I (7–1–16 Edition)
MISCELLANEOUS PROVISIONS ceeding after a reasonable search, the

Office will notify the applicant or pat-
§ 1.248 Service of papers; manner of entee and set a time period within
service; proof of service in cases which the applicant or patentee must
other than interferences and trials.
comply with the notice in accordance
(a) Service of papers must be on the with one of paragraphs (a)(1), (a)(2), or
attorney or agent of the party if there (a)(3) of this section.
be such or on the party if there is no (1) Applicant or patentee may comply
attorney or agent, and may be made in with a notice under this section by pro-
any of the following ways: viding:
(1) By delivering a copy of the paper (i) A copy of the applicant’s or pat-
to the person served; entee’s record (if any) of all of the cor-
(2) By leaving a copy at the usual respondence between the Office and the
place of business of the person served applicant or patentee for such applica-
with someone in his employment; tion, patent, or other proceeding (ex-
(3) When the person served has no cept for U.S. patent documents);
usual place of business, by leaving a (ii) A list of such correspondence; and
copy at the person’s residence, with (iii) A statement that the copy is a
some person of suitable age and discre- complete and accurate copy of the ap-
tion who resides there; plicant’s or patentee’s record of all of
(4) Transmission by first class mail. the correspondence between the Office
When service is by mail the date of and the applicant or patentee for such
mailing will be regarded as the date of application, patent, or other pro-
service; ceeding (except for U.S. patent docu-
(5) Whenever it shall be satisfactorily ments), and whether applicant or pat-
shown to the Director that none of the entee is aware of any correspondence
above modes of obtaining or serving between the Office and the applicant or
the paper is practicable, service may be patentee for such application, patent,
by notice published in the Official Ga- or other proceeding that is not among
zette. applicant’s or patentee’s records.
(b) Papers filed in the Patent and (2) Applicant or patentee may comply
Trademark Office which are required with a notice under this section by:
to be served shall contain proof of serv- (i) Producing the applicant’s or pat-
ice. Proof of service may appear on or entee’s record (if any) of all of the cor-
be affixed to papers filed. Proof of serv- respondence between the Office and the
ice shall include the date and manner applicant or patentee for such applica-
of service. In the case of personal serv- tion, patent, or other proceeding for
ice, proof of service shall also include the Office to copy (except for U.S. pat-
the name of any person served, cer- ent documents); and
tified by the person who made service. (ii) Providing a statement that the
Proof of service may be made by: papers produced by applicant or pat-
(1) An acknowledgement of service by entee are applicant’s or patentee’s
or on behalf of the person served or complete record of all of the cor-
(2) A statement signed by the attor- respondence between the Office and the
ney or agent containing the informa- applicant or patentee for such applica-
tion required by this section. tion, patent, or other proceeding (ex-
(c) See § 41.106(e) or § 42.6(e) of this cept for U.S. patent documents), and
title for service of papers in contested whether applicant or patentee is aware
cases or trials before the Patent Trial of any correspondence between the Of-
and Appeal Board. fice and the applicant or patentee for
[46 FR 29184, May 29, 1981, as amended at 49 such application, patent, or other pro-
FR 48454, Dec. 12, 1984; 69 FR 50000, Aug. 12, ceeding that is not among applicant’s
2004; 69 FR 58260, Sept. 30, 2004; 77 FR 46626, or patentee’s records.
Aug. 6, 2012] (3) If applicant or patentee does not
possess any record of the correspond-
§ 1.251 Unlocatable file. ence between the Office and the appli-
(a) In the event that the Office can- cant or patentee for such application,
not locate the file of an application, patent, or other proceeding, applicant

patent, or other patent-related pro- or patentee must comply with a notice
124
under this section by providing a state- (3) A legible copy of each item identi-
ment that applicant or patentee does fied in the document list, other than
not possess any record of the cor- U.S. patents and U.S. patent applica-
respondence between the Office and the tion publications;
applicant or patentee for such applica- (4) An English language translation
tion, patent, or other proceeding. of any non-English language item iden-
(b) With regard to a pending applica- tified in the document list; and
tion, failure to comply with one of (5) A statement by the party making
paragraphs (a)(1), (a)(2), or (a)(3) of this the submission that:
section within the time period set in (i) The party is not an individual who
the notice will result in abandonment has a duty to disclose information with
of the application. respect to the application under § 1.56;
and
[65 FR 69451, Nov. 17, 2000]
(ii) The submission complies with the
PREISSUANCE SUBMISSIONS AND requirements of 35 U.S.C. 122(e) and
PROTESTS BY THIRD PARTIES this section.
(e) The document list required by
§ 1.290 Submissions by third parties in paragraph (d)(1) of this section must
applications. include a heading that identifies the
list as a third-party submission under
(a) A third party may submit, for
§ 1.290, identify on each page of the list
consideration and entry in the record
the application number of the applica-
of a patent application, any patents,
tion in which the submission is being
published patent applications, or other
filed, list U.S. patents and U.S. patent
printed publications of potential rel-
application publications in a separate
evance to the examination of the appli-
section from other items, and identify
cation if the submission is made in ac-
each:
cordance with 35 U.S.C. 122(e) and this
(1) U.S. patent by patent number,
section. A third-party submission may
first named inventor, and issue date;
not be entered or considered by the Of-
(2) U.S. patent application publica-
fice if any part of the submission is not
tion by patent application publication
in compliance with 35 U.S.C. 122(e) and
number, first named inventor, and pub-
this section.
lication date;
(b) Any third-party submission under (3) Foreign patent or published for-
this section must be filed prior to the eign patent application by the country
earlier of: or patent office that issued the patent
(1) The date a notice of allowance or published the application; the appli-
under § 1.311 is given or mailed in the cant, patentee, or first named inventor;
application; or an appropriate document number; and
(2) The later of: the publication date indicated on the
(i) Six months after the date on patent or published application; and
which the application is first published (4) Non-patent publication by author
by the Office under 35 U.S.C. 122(b) and (if any), title, pages being submitted,
§ 1.211, or publication date, and, where available,
(ii) The date the first rejection under publisher and place of publication. If
§ 1.104 of any claim by the examiner is no publication date is known, the third
given or mailed during the examina- party must provide evidence of publica-
tion of the application. tion.
(c) Any third-party submission under (f) Any third-party submission under
this section must be made in writing. this section must be accompanied by
(d) Any third-party submission under the fee set forth in § 1.17(o) for every
this section must include: ten items or fraction thereof identified
(1) A document list identifying the in the document list.
documents, or portions of documents, (g) The fee otherwise required by
being submitted in accordance with paragraph (f) of this section is not re-
paragraph (e) of this section; quired for a submission listing three or
(2) A concise description of the as- fewer total items that is accompanied
serted relevance of each item identified by a statement by the party making

in the document list; the submission that, to the knowledge
125
§ 1.291 37 CFR Ch. I (7–1–16 Edition)
of the person signing the statement (c) In addition to compliance with

after making reasonable inquiry, the paragraphs (a) and (b) of this section, a
submission is the first and only sub- protest must include:
mission under 35 U.S.C. 122(e) filed in (1) An information list of the docu-
the application by the party or a party ments, portions of documents, or other
in privity with the party. information being submitted, where
(h) In the absence of a request by the each:
Office, an applicant need not reply to a (i) U.S. patent is identified by patent
submission under this section. number, first named inventor, and
(i) The provisions of § 1.8 do not apply issue date;
to the time periods set forth in this (ii) U.S. patent application publica-
section. tion is identified by patent application
publication number, first named inven-
[77 FR 42173, July 17, 2012, as amended at 78 tor, and publication date;
FR 62406, Oct. 21, 2013]
(iii) Foreign patent or published for-
eign patent application is identified by
§ 1.291 Protests by the public against
pending applications. the country or patent office that issued
the patent or published the applica-
(a) A protest may be filed by a mem- tion; an appropriate document number;
ber of the public against a pending ap- the applicant, patentee, or first named
plication, and it will be matched with inventor; and the publication date indi-
the application file if it adequately cated on the patent or published appli-
identifies the patent application. A cation;
protest submitted within the time (iv) Non-patent publication is identi-
frame of paragraph (b) of this section, fied by author (if any), title, pages
which is not matched, or not matched being submitted, publication date, and,
in a timely manner to permit review by where available, publisher and place of
the examiner during prosecution, due publication; and
to inadequate identification, may not (v) Item of other information is iden-
be entered and may be returned to the tified by date, if known.
protestor where practical, or, if return (2) A concise explanation of the rel-
is not practical, discarded. evance of each item identified in the
(b) The protest will be entered into information list pursuant to paragraph
the record of the application if, in addi- (c)(1) of this section;
tion to complying with paragraph (c) of (3) A legible copy of each item identi-
this section, the protest has been fied in the information list, other than
served upon the applicant in accord- U.S. patents and U.S. patent applica-
ance with § 1.248, or filed with the Of- tion publications;
fice in duplicate in the event service is (4) An English language translation
not possible; and, except for paragraph of any non-English language item iden-
(b)(1) of this section, the protest was tified in the information list; and
filed prior to the date the application (5) If it is a second or subsequent pro-
was published under § 1.211, or the date test by the same real party in interest,
a notice of allowance under § 1.311 was an explanation as to why the issue(s)
given or mailed, whichever occurs first: raised in the second or subsequent pro-
(1) If a protest is accompanied by the test are significantly different than
written consent of the applicant, the those raised earlier and why the sig-
protest will be considered if the protest nificantly different issue(s) were not
is filed prior to the date a notice of al- presented earlier, and a processing fee
lowance under § 1.311 is given or mailed under § 1.17(i) must be submitted.
in the application. (d) A member of the public filing a
(2) A statement must accompany a protest in an application under this
protest that it is the first protest subsection will not receive any commu-
mitted in the application by the real nication from the Office relating to the
party in interest who is submitting the protest, other than the return of a self-
protest; or the protest must comply addressed postcard which the member
with paragraph (c)(5) of this section. of the public may include with the pro-
This section does not apply to the first test in order to receive an acknowledg-
protest filed in an application. ment by the Office that the protest has
126
been received. The limited involvement account identified in a previously filed

of the member of the public filing a authorization to charge such fees:
protest pursuant to this section ends (1) An incorrect issue fee or publica-
with the filing of the protest, and no tion fee; or
further submission on behalf of the (2) A fee transmittal form (or letter)
protestor will be considered, unless the for payment of issue fee or publication
submission is made pursuant to para- fee.
graph (c)(5) of this section.
(e) Where a protest raising inequi- [65 FR 57060, Sept. 20, 2000, as amended at 66
table conduct issues satisfies the provi- FR 67096, Dec. 28, 2001; 69 FR 56545, Sept. 21,
2004; 78 FR 62406, Oct. 21, 2013]
sions of this section for entry, it will
be entered into the application file,
§ 1.312 Amendments after allowance.
generally without comment on the in-
equitable conduct issues raised in it. No amendment may be made as a
(f) In the absence of a request by the matter of right in an application after
Office, an applicant need not reply to a the mailing of the notice of allowance.
protest. Any amendment filed pursuant to this
(g) Protests that fail to comply with section must be filed before or with the
paragraphs (b) or (c) of this section payment of the issue fee, and may be
may not be entered, and if not entered, entered on the recommendation of the
will be returned to the protestor, or primary examiner, approved by the Di-
discarded, at the option of the Office. rector, without withdrawing the appli-
cation from issue.
FR 42173, July 17, 2012] [65 FR 14873, Mar. 20, 2000]
§§ 1.292–1.297 [Reserved] § 1.313 Withdrawal from issue.
REVIEW OF PATENT AND TRADEMARK (a) Applications may be withdrawn
OFFICE DECISIONS BY COURT from issue for further action at the ini-
tiative of the Office or upon petition by
§§ 1.301–1.304 [Reserved] the applicant. To request that the Of-
fice withdraw an application from
ALLOWANCE AND ISSUE OF PATENT
issue, applicant must file a petition
§ 1.311 Notice of allowance. under this section including the fee set
forth in § 1.17(h) and a showing of good
(a) If, on examination, it appears and sufficient reasons why withdrawal
that the applicant is entitled to a pat- of the application from issue is nec-
ent under the law, a notice of allow-
essary. A petition under this section is
ance will be sent to the applicant at
not required if a request for continued
the correspondence address indicated
examination under § 1.114 is filed prior
in § 1.33. The notice of allowance shall
to payment of the issue fee. If the Of-
specify a sum constituting the issue fee
fice withdraws the application from
and any required publication fee
issue, the Office will issue a new notice
(§ 1.211(e)), which issue fee and any re-
of allowance if the Office again allows
quired publication fee must both be
the application.
paid within three months from the date
of mailing of the notice of allowance to (b) Once the issue fee has been paid,
avoid abandonment of the application. the Office will not withdraw the appli-
This three-month period is not extend- cation from issue at its own initiative
able. for any reason except:
(b) An authorization to charge the (1) A mistake on the part of the Of-
issue fee or other post-allowance fees fice;
set forth in § 1.18 to a deposit account (2) A violation of § 1.56 or illegality in
may be filed in an individual applica- the application;
tion only after mailing of the notice of (3) Unpatentability of one or more
allowance. The submission of either of claims; or
the following after the mailing of a no- (4) For an interference or derivation
tice of allowance will operate as a re- proceeding.
quest to charge the correct issue fee or (c) Once the issue fee has been paid,
any publication fee due to any deposit the application will not be withdrawn
127
§ 1.314 37 CFR Ch. I (7–1–16 Edition)
from issue upon petition by the appli- sidered as pending before the Patent
cant for any reason except: and Trademark Office.
(1) Unpatentability of one of more
[62 FR 53198, Oct. 10, 1997]
claims, which petition must be accom-
panied by an unequivocal statement §§ 1.317–1.318 [Reserved]
that one or more claims are
unpatentable, an amendment to such DISCLAIMER
claim or claims, and an explanation as
to how the amendment causes such § 1.321 Statutory disclaimers, includ-
claim or claims to be patentable; ing terminal disclaimers.
(2) Consideration of a request for con- (a) A patentee owning the whole or
tinued examination in compliance with any sectional interest in a patent may
§ 1.114; or disclaim any complete claim or claims
(3) Express abandonment of the appli- in a patent. In like manner any pat-
cation. Such express abandonment may entee may disclaim or dedicate to the
be in favor of a continuing application. public the entire term, or any terminal
(d) A petition under this section will
part of the term, of the patent granted.
not be effective to withdraw the appli-
Such disclaimer is binding upon the
cation from issue unless it is actually
grantee and its successors or assigns. A
received and granted by the appro-
notice of the disclaimer is published in
priate officials before the date of issue.
the Official Gazette and attached to the
Withdrawal of an application from
printed copies of the specification. The
issue after payment of the issue fee
disclaimer, to be recorded in the Pat-
may not be effective to avoid publica-
ent and Trademark Office, must:
tion of application information.
(1) Be signed by the patentee, or an
[65 FR 14873, Mar. 20, 2000, as amended at 65 attorney or agent of record;
FR 50105, Aug. 16, 2000; 77 FR 46626, Aug. 6, (2) Identify the patent and complete
2012]
claim or claims, or term being dis-
§ 1.314 Issuance of patent. claimed. A disclaimer which is not a
disclaimer of a complete claim or
If applicant timely pays the issue fee, claims, or term will be refused recorda-
the Office will issue the patent in reg- tion;
ular course unless the application is (3) State the present extent of pat-
withdrawn from issue (§ 1.313) or the Of- entee’s ownership interest in the pat-
fice defers issuance of the patent. To ent; and
request that the Office defer issuance
(4) Be accompanied by the fee set
of a patent, applicant must file a peti-
forth in § 1.20(d).
tion under this section including the
(b) An applicant may disclaim or
fee set forth in § 1.17(h) and a showing
dedicate to the public the entire term,
of good and sufficient reasons why it is
or any terminal part of the term, of a
necessary to defer issuance of the pat-
patent to be granted. Such terminal
ent.
disclaimer is binding upon the grantee
[65 FR 54677, Sept. 8, 2000] and its successors or assigns. The ter-
minal disclaimer, to be recorded in the
§ 1.315 Delivery of patent. Patent and Trademark Office, must:
The patent will be delivered or (1) Be signed by the applicant or an
mailed upon issuance to the cor- attorney or agent of record;
respondence address of record. See (2) Specify the portion of the term of
§ 1.33(a). the patent being disclaimed;
[61 FR 42807, Aug. 19, 1996] (3) State the present extent of appli-
cant’s ownership interest in the patent
§ 1.316 Application abandoned for fail- to be granted; and
ure to pay issue fee. (4) Be accompanied by the fee set
If the issue fee is not paid within forth in § 1.20(d).
three months from the date of the no- (c) A terminal disclaimer, when filed
tice of allowance, the application will to obviate judicially created double
be regarded as abandoned. Such an patenting in a patent application or in

abandoned application will not be con- a reexamination proceeding except as
128
provided for in paragraph (d) of this CORRECTION OF ERRORS IN PATENT

section, must:
(1) Comply with the provisions of § 1.322 Certificate of correction of Of-
paragraphs (b)(2) through (b)(4) of this fice mistake.
section; (a)(1) The Director may issue a cer-
(2) Be signed in accordance with tificate of correction pursuant to 35
paragraph (b)(1) of this section if filed U.S.C. 254 to correct a mistake in a
in a patent application or in accord- patent, incurred through the fault of
ance with paragraph (a)(1) of this sec- the Office, which mistake is clearly
tion if filed in a reexamination pro-
disclosed in the records of the Office:
ceeding; and
(3) Include a provision that any pat- (i) At the request of the patentee or
ent granted on that application or any the patentee’s assignee;
patent subject to the reexamination (ii) Acting sua sponte for mistakes
proceeding shall be enforceable only that the Office discovers; or
for and during such period that said (iii) Acting on information about a
patent is commonly owned with the ap- mistake supplied by a third party.
plication or patent which formed the (2)(i) There is no obligation on the
basis for the judicially created double Office to act on or respond to a submis-
patenting. sion of information or request to issue
(d) A terminal disclaimer, when filed a certificate of correction by a third
in a patent application or in a reexam- party under paragraph (a)(1)(iii) of this
ination proceeding to obviate double section.
patenting based upon a patent or appli- (ii) Papers submitted by a third party
cation that is not commonly owned but under this section will not be made of
was disqualified as prior art as set record in the file that they relate to
forth in either § 1.104(c)(4)(ii) or
nor be retained by the Office.
(c)(5)(ii) as the result of activities un-
(3) If the request relates to a patent
dertaken within the scope of a joint re-
search agreement, must: involved in an interference or trial be-
(1) Comply with the provisions of fore the Patent Trial and Appeal
paragraphs (b)(2) through (b)(4) of this Board, the request must comply with
section; the requirements of this section and be
(2) Be signed in accordance with accompanied by a motion under
paragraph (b)(1) of this section if filed § 41.121(a)(2), § 41.121(a)(3), or § 42.20 of
in a patent application or be signed in this title.
accordance with paragraph (a)(1) of (4) The Office will not issue a certifi-
this section if filed in a reexamination cate of correction under this section
proceeding; and without first notifying the patentee
(3) Include a provision waiving the (including any assignee of record) at
right to separately enforce any patent the correspondence address of record as
granted on that application or any pat- specified in § 1.33(a) and affording the
ent subject to the reexamination pro- patentee or an assignee an opportunity
ceeding and the patent or any patent to be heard.
granted on the application which (b) If the nature of the mistake on
formed the basis for the double pat- the part of the Office is such that a cer-
enting, and that any patent granted on
tificate of correction is deemed inap-
that application or any patent subject
propriate in form, the Director may
to the reexamination proceeding shall
issue a corrected patent in lieu thereof
be enforceable only for and during such
period that said patent and the patent, as a more appropriate form for certifi-
or any patent granted on the applica- cate of correction, without expense to
tion, which formed the basis for the the patentee.
double patenting are not separately en- (35 U.S.C. 254)
forced.
[58 FR 54510, Oct. 22, 1993, as amended at 61 FR 48454, Dec. 12, 1984; 65 FR 54677, Sept. 8,
FR 42807, Aug. 19, 1996; 70 FR 1824, Jan. 11, 2000; 69 FR 50001, Aug. 12, 2004; 77 FR 46626,
2005; 70 FR 54266, Sept. 14, 2005; 77 FR 48822, Aug. 6, 2012]
Aug. 14, 2012; 78 FR 11059, Feb. 14, 2013]
129
§ 1.323 37 CFR Ch. I (7–1–16 Edition)
§ 1.323 Certificate of correction of ap- form of a motion under § 42.22 of this

plicant’s mistake. title. The motion under § 41.121(a)(2) or
The Office may issue a certificate of § 42.22 of this title must comply with
correction under the conditions speci- the requirements of this section.
fied in 35 U.S.C. 255 at the request of [77 FR 48822, Aug. 14, 2012]
the patentee or the patentee’s assignee,
upon payment of the fee set forth in § 1.325 Other mistakes not corrected.
§ 1.20(a). If the request relates to a pat-
ent involved in an interference or trial Mistakes other than those provided
before the Patent Trial and Appeal for in §§ 1.322, 1.323, 1.324, and not af-
Board, the request must comply with fording legal grounds for reissue or for
the requirements of this section and be reexamination, will not be corrected
accompanied by a motion under after the date of the patent.
§ 41.121(a)(2), § 41.121(a)(3) or § 42.20 of (35 U.S.C. 6, Pub. L. 97–247)
this title.
[48 FR 2714, Jan. 20, 1983]
[77 FR 46626, Aug. 6, 2012]
ARBITRATION AWARDS
§ 1.324 Correction of inventorship in
patent, pursuant to 35 U.S.C. 256. §§ 1.331–1.334 [Reserved]
(a) Whenever through error a person
is named in an issued patent as the in- § 1.335 Filing of notice of arbitration
ventor, or an inventor is not named in awards.
an issued patent, the Director, pursu- (a) Written notice of any award by an
ant to 35 U.S.C. 256, may, on applica- arbitrator pursuant to 35 U.S.C. 294
tion of all the parties and assignees, or must be filed in the Patent and Trade-
on order of a court before which such mark Office by the patentee, or the
matter is called in question, issue a patentee’s assignee or licensee. If the
certificate naming only the actual in- award involves more than one patent a
ventor or inventors. separate notice must be filed for place-
(b) Any request to correct ment in the file of each patent. The no-
inventorship of a patent pursuant to tice must set forth the patent number,
paragraph (a) of this section must be the names of the inventor and patent
accompanied by: owner, and the names and addresses of
(1) A statement from each person the parties to the arbitration. The no-
who is being added as an inventor and tice must also include a copy of the
each person who is currently named as
award.
an inventor either agreeing to the
change of inventorship or stating that (b) If an award by an arbitrator pur-
he or she has no disagreement in re- suant to 35 U.S.C. 294 is modified by a
gard to the requested change; court, the party requesting the modi-
(2) A statement from all assignees of fication must file in the Patent and
the parties submitting a statement Trademark Office, a notice of the
under paragraph (b)(1) of this section modification for placement in the file
agreeing to the change of inventorship of each patent to which the modifica-
in the patent, which statement must tion applies. The notice must set forth
comply with the requirements of the patent number, the names of the
§ 3.73(c) of this chapter; and inventor and patent owner, and the
(3) The fee set forth in § 1.20(b). names and addresses of the parties to
(c) For correction of inventorship in the arbitration. The notice must also
an application, see § 1.48. include a copy of the court’s order
(d) In an interference under part 41, modifying the award.
subpart D, of this title, a request for (c) Any award by an arbitrator pursu-
correction of inventorship in a patent ant to 35 U.S.C. 294 shall be unenforce-
must be in the form of a motion under able until any notices required by para-
§ 41.121(a)(2) of this title. In a contested graph (a) or (b) of this section are filed
case under part 42, subpart D, of this in the Patent and Trademark Office. If
title, a request for correction of any required notice is not filed by the
inventorship in a patent must be in the party designated in paragraph (a) or (b)
130
of this section, any party to the arbi- (5) For an international application
tration proceeding may file such a no- which has entered the United States as
tice. a Designated Office under 35 U.S.C. 371,
(35 U.S.C. 6, Pub. L. 97–247)
the international filing date granted
under Article 11(1) of the Patent Co-
[48 FR 2714, Jan. 20, 1983] operation Treaty which is considered
to be the United States filing date
AMENDMENT OF RULES
§ 1.351 Amendments to rules will be (d) Maintenance fees may be paid in
published. patents without surcharge during the
periods extending respectively from:
All amendments to the regulations in
(1) 3 years through 3 years and 6
this part will be published in the Offi-
months after grant for the first main-
cial Gazette and in the FEDERAL REG-
tenance fee,
ISTER.
(2) 7 years through 7 years and 6
§ 1.352 [Reserved] months after grant for the second
maintenance fee, and
MAINTENANCE FEES (3) 11 years through 11 years and 6
months after grant for the third main-
§ 1.362 Time for payment of mainte- tenance fee.
nance fees. (e) Maintenance fees may be paid
(a) Maintenance fees as set forth in with the surcharge set forth in § 1.20(h)
§§ 1.20 (e) through (g) are required to be during the respective grace periods
paid in all patents based on applica- after:
tions filed on or after December 12, (1) 3 years and 6 months and through
1980, except as noted in paragraph (b) of the day of the 4th anniversary of the
this section, to maintain a patent in grant for the first maintenance fee.
force beyond 4, 8 and 12 years after the (2) 7 years and 6 months and through
date of grant. the day of the 8th anniversary of the
(b) Maintenance fees are not required grant for the second maintenance fee,
for any plant patents or for any design and
patents. Maintenance fees are not re- (3) 11 years and 6 months and through
quired for a reissue patent if the patent the day of the 12th anniversary of the
being reissued did not require mainte- grant for the third maintenance fee.
nance fees. (f) If the last day for paying a main-
(c) The application filing dates for tenance fee without surcharge set forth
purposes of payment of maintenance in paragraph (d) of this section, or the
fees are as follows: last day for paying a maintenance fee
(1) For an application not claiming with surcharge set forth in paragraph
benefit of an earlier application, the (e) of this section, falls on a Saturday,
actual United States filing date of the Sunday, or a federal holiday within the
application. District of Columbia, the maintenance
(2) For an application claiming ben- fee and any necessary surcharge may
efit of an earlier foreign application be paid under paragraph (d) or para-
under 35 U.S.C. 119, the United States graph (e) respectively on the next suc-
filing date of the application. ceeding day which is not a Saturday,
(3) For a continuing (continuation, Sunday, or federal holiday.
division, continuation-in-part) applica- (g) Unless the maintenance fee and
tion claiming the benefit of a prior pat- any applicable surcharge is paid within
ent application under 35 U.S.C. 120, the the time periods set forth in para-
actual United States filing date of the graphs (d), (e) or (f) of this section, the
continuing application. patent will expire as of the end of the
(4) For a reissue application, includ- grace period set forth in paragraph (e)
ing a continuing reissue application of this section. A patent which expires
claiming the benefit of a reissue appli- for the failure to pay the maintenance
cation under 35 U.S.C. 120, United fee will expire at the end of the same
States filing date of the original non- date (anniversary date) the patent was
reissue application on which the patent granted in the 4th, 8th, or 12th year
reissued is based. after grant.
131
§ 1.363 37 CFR Ch. I (7–1–16 Edition)
(h) The periods specified in §§ 1.362 (d) ent must be submitted in the amount
and (e) with respect to a reissue appli- due on the date the maintenance fee
cation, including a continuing reissue and any necessary surcharge are paid.
application thereof, are counted from A maintenance fee or surcharge may be
the date of grant of the original non-re- paid in the manner set forth in § 1.23 or
issue application on which the reissued by an authorization to charge a deposit
patent is based. account established pursuant to § 1.25.
[49 FR 34724, Aug. 31, 1984, as amended at 56 Payment of a maintenance fee and any
FR 65154, Dec. 13, 1991; 58 FR 54511, Oct. 22, necessary surcharge or the authoriza-
1993] tion to charge a deposit account must
be submitted within the periods set
§ 1.363 Fee address for maintenance forth in § 1.362 (d), (e), or (f). Any pay-
fee purposes. ment or authorization of maintenance
(a) All notices, receipts, refunds, and fees and surcharges filed at any other
other communications relating to pay- time will not be accepted and will not
ment or refund of maintenance fees serve as a payment of the maintenance
will be directed to the correspondence fee except insofar as a delayed pay-
address used during prosecution of the ment of the maintenance fee is accept-
application as indicated in § 1.33(a) un- ed by the Director in an expired patent
less: pursuant to a petition filed under
(1) A fee address for purposes of pay- § 1.378. Any authorization to charge a
ment of maintenance fees is set forth deposit account must authorize the im-
when submitting the issue fee, or mediate charging of the maintenance
(2) A change in the correspondence fee and any necessary surcharge to the
address for all purposes is filed after deposit account. Payment of less than
payment of the issue fee, or the required amount, payment in a
(3) A fee address or a change in the manner other than that set forth in
‘‘fee address’’ is filed for purposes of re- § 1.23, or in the filing of an authoriza-
ceiving notices, receipts and other cor- tion to charge a deposit account having
respondence relating to the payment of insufficient funds will not constitute
maintenance fees after the payment of payment of a maintenance fee or sur-
the issue fee, in which instance, the charge on a patent. The procedures set
latest such address will be used. forth in § 1.8 or § 1.10 may be utilized in
(b) An assignment of a patent appli- paying maintenance fees and any nec-
cation or patent does not result in a essary surcharges.
change of the ‘‘correspondence ad- (c) In submitting maintenance fees
dress’’ or ‘‘fee address’’ for mainte- and any necessary surcharges, identi-
nance fee purposes. fication of the patents for which main-
(c) A fee address must be an address tenance fees are being paid must in-
associated with a Customer Number. clude the patent number, and the appli-
[49 FR 34725, Aug. 31, 1984, as amended at 69 cation number of the United States ap-
FR 29878, May 26, 2004] plication for the patent on which the
maintenance fee is being paid. If the
§ 1.366 Submission of maintenance payment includes identification of only
fees. the patent number (i.e., does not iden-
(a) The patentee may pay mainte- tify the application number of the
nance fees and any necessary sur- United States application for the pat-
charges, or any person or organization ent on which the maintenance fee is
may pay maintenance fees and any being paid), the Office may apply the
necessary surcharges on behalf of a payment to the patent identified by
patentee. A maintenance fee trans- patent number in the payment or may
mittal letter may be signed by a juris- return the payment.
tic applicant or patent owner. A pat- (d) Payment of maintenance fees and
entee need not file authorization to en- any surcharges should identify the fee
able any person or organization to pay being paid for each patent as to wheth-
maintenance fees and any necessary er it is the 31⁄2-, 71⁄2-, or 111⁄2-year fee,
surcharges on behalf of the patentee. whether small entity status is being
(b) A maintenance fee and any nec- changed or claimed, the amount of the
essary surcharge submitted for a pat- maintenance fee and any surcharge
132
being paid, and any assigned customer other time as may be set in the action
number. If the maintenance fee and complained of, and must be accom-
any necessary surcharge is being paid panied by the fee set forth in § 1.17(g).
on a reissue patent, the payment must The petition may include a request
identify the reissue patent by reissue that the petition fee be refunded if the
patent number and reissue application refusal to accept and record the main-
number as required by paragraph (c) of tenance fee is determined to result
this section and should also include the from an error by the Patent and Trade-
original patent number. mark Office.
(e) Maintenance fee payments and (c) Any petition filed under this sec-
surcharge payments relating thereto tion must comply with the require-
must be submitted separate from any ments of § 1.181(b) and must be signed
other payments for fees or charges, by an attorney or agent registered to
whether submitted in the manner set practice before the Patent and Trade-
forth in § 1.23 or by an authorization to mark Office, or by the patentee, the as-
charge a deposit account. If mainte- signee, or other party in interest.
nance fee and surcharge payments for [49 FR 34725, Aug. 31, 1984, as amended at 62
more than one patent are submitted to- FR 53199, Oct. 10, 1997; 69 FR 56545, Sept. 21,
gether, they should be submitted on as 2004]
few sheets as possible with the patent
numbers listed in increasing patent § 1.378 Acceptance of delayed payment
number order. If the payment sub- of maintenance fee in expired pat-
mitted is insufficient to cover the ent to reinstate patent.
maintenance fees and surcharges for all (a) The Director may accept the pay-
the listed patents, the payment will be ment of any maintenance fee due on a
applied in the order the patents are patent after expiration of the patent if,
listed, beginning at the top of the list- upon petition, the delay in payment of
ing. the maintenance fee is shown to the
(f) Notification of any change in sta- satisfaction of the Director to have
tus resulting in loss of entitlement to been unintentional. If the Director ac-
small entity status must be filed in a cepts payment of the maintenance fee
patent prior to paying, or at the time upon petition, the patent shall be con-
of paying, the earliest maintenance fee sidered as not having expired, but will
due after the date on which status as a be subject to the conditions set forth in
small entity is no longer appropriate. 35 U.S.C. 41(c)(2).
See § 1.27(g). (b) Any petition to accept an unin-
(g) Maintenance fees and surcharges tentionally delayed payment of a
relating thereto will not be refunded maintenance fee must include:
except in accordance with §§ 1.26 and (1) The required maintenance fee set
1.28(a). forth in § 1.20(e) through (g);
(2) The petition fee as set forth in
FR 54503, Oct. 22, 1993; 62 FR 53199, Oct. 10, § 1.17(m); and
1997; 65 FR 54677, Sept. 8, 2000; 65 FR 78960, (3) A statement that the delay in
Dec. 18, 2000; 78 FR 62406, Oct. 21, 2013] payment of the maintenance fee was
unintentional. The Director may re-
§ 1.377 Review of decision refusing to quire additional information where
accept and record payment of a there is a question whether the delay
maintenance fee filed prior to expi- was unintentional.
ration of patent. (c) Any petition under this section
(a) Any patentee who is dissatisfied must be signed in compliance with
with the refusal of the Patent and § 1.33(b).
Trademark Office to accept and record (d) Reconsideration of a decision re-
a maintenance fee which was filed fusing to accept a delayed maintenance
prior to the expiration of the patent fee may be obtained by filing a petition
may petition the Director to accept for reconsideration within two months
and record the maintenance fee. of the decision, or such other time as
(b) Any petition under this section set in the decision refusing to accept
must be filed within two months of the the delayed payment of the mainte-
action complained of, or within such nance fee.
133
§ 1.401 37 CFR Ch. I (7–1–16 Edition)
(e) If the delayed payment of the § 1.412 The United States Receiving
maintenance fee is not accepted, the Office.
maintenance fee will be refunded fol- (a) The United States Patent and
lowing the decision on the petition for Trademark Office is a Receiving Office
reconsideration, or after the expiration only for applicants who are residents
of the time for filing such a petition for or nationals of the United States of
reconsideration, if none is filed. America.
[78 FR 62407, Oct. 21, 2013] (b) The Patent and Trademark Office,
when acting as a Receiving Office, will
be identified by the full title ‘‘United
Subpart C—International States Receiving Office’’ or by the ab-
Processing Provisions breviation ‘‘RO/US.’’
(c) The major functions of the Re-
AUTHORITY: Secs. 1.401 to 1.499 also issued ceiving Office include:
under 35 U.S.C. 41 and 351 through 376. (1) According of international filing
SOURCE: 43 FR 20466, May 11, 1978, unless dates to international applications
otherwise noted. meeting the requirements of PCT Art.
11(1), and PCT Rule 20;
GENERAL INFORMATION (2) Assuring that international appli-
cations meet the standards for format
§ 1.401 Definitions of terms under the and content of PCT Art. 14(1), PCT
Patent Cooperation Treaty. Rule 9, 26, 29.1, 37, 38, 91, and portions
(a) The abbreviation PCT and the of PCT Rules 3 through 11;
term Treaty mean the Patent Coopera- (3) Collecting and, when required,
tion Treaty. transmitting fees due for processing
(b) International Bureau means the international applications (PCT Rule
World Intellectual Property Organiza- 14, 15, 16);
tion located in Geneva, Switzerland. (4) Transmitting the record and
(c) Administrative Instructions means search copies to the International Bu-
that body of instructions for operating reau and International Searching Au-
under the Patent Cooperation Treaty thority, respectively (PCT Rules 22 and
referred to in PCT Rule 89. 23); and
(d) Request, when capitalized, means (5) Determining compliance with ap-
that element of the international applicable requirements of part 5 of this
plication described in PCT Rules 3 and chapter.
4. (6) Reviewing and, unless prescrip-
(e) International application, as used tions concerning national security pre-
vent the application from being so
in this subchapter is defined in § 1.9(b).
transmitted (PCT Rule 19.4), transmit-
(f) Priority date for the purpose of
ting the international application to
computing time limits under the Pat-
the International Bureau for proc-
ent Cooperation Treaty is defined in essing in its capacity as a Receiving
PCT Art. 2 (xi). Note also § 1.465. Office:
(g) Demand, when capitalized, means (i) Where the United States Receiv-
that document filed with the Inter- ing Office is not the competent Receiv-
national Preliminary Examining Au- ing Office under PCT Rule 19.1 or 19.2
thority which requests an inter- and § 1.421(a); or
national preliminary examination. (ii) Where the international applica-
(h) Annexes means amendments made tion is not in English but is in a lan-
to the claims, description or the draw- guage accepted under PCT Rule 12.1(a)
ings before the International Prelimi- by the International Bureau as a Re-
nary Examining Authority. ceiving Office; or
(i) Other terms and expressions in (iii) Where there is agreement and
this subpart C not defined in this sec- authorization in accordance with PCT
tion are to be taken in the sense indi- Rule 19.4(a)(iii).
cated in PCT Art. 2 and 35 U.S.C. 351.

[43 FR 20466, May 11, 1978, as amended at 52 FR 21439, May 2, 1995; 63 FR 29617, June 1,
FR 20047, May 28, 1987] 1998]
134
§ 1.413 The United States International ing international processing will be

Searching Authority. identified by the full title ‘‘United
(a) Pursuant to appointment by the States Designated Office’’ or by the ab-
Assembly, the United States Patent breviation ‘‘DO/US’’ or by the full title
and Trademark Office will act as an ‘‘United States Elected Office’’ or by
International Searching Authority for the abbreviation ‘‘EO/US’’.
international applications filed in the (c) The major functions of the United
United States Receiving Office and in States Designated Office or Elected Of-
other Receiving Offices as may be fice in respect to international applica-
agreed upon by the Director, in accord- tions in which the United States of
ance with the agreement between the America has been designated or elect-
Patent and Trademark Office and the ed, include:
International Bureau (PCT Art. (1) Receiving various notifications
16(3)(b)). throughout the international stage and
(b) The Patent and Trademark Office, (2) National stage processing for
when acting as an International international applications entering the
Searching Authority, will be identified national stage under 35 U.S.C. 371.
by the full title ‘‘United States Inter- [52 FR 20047, May 28, 1987, as amended at 77
national Searching Authority’’ or by FR 48823, Aug. 14, 2012]
the abbreviation ‘‘ISA/US.’’
(c) The major functions of the Inter- § 1.415 The International Bureau.
national Searching Authority include: (a) The International Bureau is the
(1) Approving or establishing the World Intellectual Property Organiza-
title and abstract; tion located at Geneva, Switzerland. It
(2) Considering the matter of unity of is the international intergovernmental
invention; organization which acts as the coordi-
(3) Conducting international and nating body under the Treaty and the
international-type searches and pre- Regulations (PCT Art. 2 (xix) and 35
paring international and international- U.S.C. 351 (h)).
type search reports (PCT Art. 15, 17 and (b) The major functions of the Inter-
18, and PCT Rules 25, 33 to 45 and 47), national Bureau include:
and issuing declarations that no inter- (1) Publishing of international appli-
national search report will be estab- cations and the International Gazette;
lished (PCT Article 17(2)(a)); (2) Transmitting copies of inter-
(4) Preparing written opinions of the national applications to Designated Of-
International Searching Authority in fices;
accordance with PCT Rule 43bis (when (3) Storing and maintaining record
necessary); and copies; and
(5) Transmitting the international (4) Transmitting information to au-
search report and the written opinion thorities pertinent to the processing of
of the International Searching Author- specific international applications.
ity to the applicant and the Inter-
national Bureau. § 1.416 The United States International
Preliminary Examining Authority.
FR 59886, Oct. 20, 2003] (a) Pursuant to appointment by the
Assembly, the United States Patent
§ 1.414 The United States Patent and and Trademark Office will act as an
Trademark Office as a Designated International Preliminary Examining
Office or Elected Office. Authority for international applica-
(a) The United States Patent and tions filed in the United States Receiv-
Trademark Office will act as a Des- ing Office and in other Receiving Of-
ignated Office or Elected Office for fices as may be agreed upon by the Di-
international applications in which the rector, in accordance with agreement
United States of America has been des- between the Patent and Trademark Of-
ignated or elected as a State in which fice and the International Bureau.
patent protection is desired. (b) The United States Patent and
(b) The United States Patent and Trademark Office, when acting as an
Trademark Office, when acting as a International Preliminary Examining

Designated Office or Elected Office dur- Authority, will be identified by the full
135
§ 1.417 37 CFR Ch. I (7–1–16 Edition)
title ‘‘United States International Pre- (b) Notwithstanding any other provi-
liminary Examining Authority’’ or by sion of law, no person is required to re-
the abbreviation ‘‘IPEA/US.’’ spond to nor shall a person be subject
(c) The major functions of the Inter- to a penalty for failure to comply with
national Preliminary Examining Au- a collection of information subject to
thority include: the requirements of the Paperwork Re-
(1) Receiving and checking for de- duction Act unless that collection of
fects in the Demand; information displays a currently valid
(2) Forwarding Demands in accord- Office of Management and Budget con-
ance with PCT Rule 59.3; trol number. This section constitutes
(3) Collecting the handling fee for the the display required by 44 U.S.C. 3512(a)
International Bureau and the prelimi- and 5 CFR 1320.5(b)(2)(i) for the collec-
nary examination fee for the United tion of information under Office of
States International Preliminary Ex- Management and Budget control num-
amining Authority; ber 0651–0021 (see 5 CFR
(4) Informing applicant of receipt of 1320.5(b)(2)(ii)(D)).
the Demand;
[63 FR 29617, June 1, 1998]
(5) Considering the matter of unity of
invention; WHO MAY FILE AN INTERNATIONAL
(6) Providing an international pre- APPLICATION
liminary examination report which is a
non-binding opinion on the questions of § 1.421 Applicant for international ap-
whether the claimed invention appears: plication.
to be novel, to involve an inventive
step (to be nonobvious), and to be in- (a) Only residents or nationals of the
dustrially applicable; and United States of America may file
international applications in the
(7) Transmitting the international
United States Receiving Office. If an
preliminary examination report to ap-
international application does not in-
plicant and the International Bureau.
clude an applicant who is indicated as
[52 FR 20047, May 28, 1987, as amended at 63 being a resident or national of the
FR 29617, June 1, 1998] United States of America, and at least
one applicant:
§ 1.417 Submission of translation of
international publication. (1) Has indicated a residence or na-
tionality in a PCT Contracting State,
The submission of an English lan- or
guage translation of the publication of (2) Has no residence or nationality
an international application pursuant indicated, applicant will be so notified
to 35 U.S.C. 154(d)(4) must clearly iden- and, if the international application in-
tify the international application to cludes a fee amount equivalent to that
which it pertains (§ 1.5(a)) and be clear- required by § 1.445(a)(4), the inter-
ly identified as a submission pursuant national application will be forwarded
to 35 U.S.C. 154(d)(4). Otherwise, the for processing to the International Bu-
submission will be treated as a filing reau acting as a Receiving Office (see
under 35 U.S.C. 111(a). Such submis- also § 1.412(c)(6)).
sions should be marked ‘‘Mail Stop (b) Although the United States Re-
PCT.’’ ceiving Office will accept international
[68 FR 71007, Dec. 22, 2003] applications filed by any applicant who
is a resident or national of the United
§ 1.419 Display of currently valid con- States of America for international
trol number under the Paperwork processing, for the purposes of the des-
Reduction Act. ignation of the United States, an inter-
(a) Pursuant to the Paperwork Re- national application will be accepted
duction Act of 1995 (44 U.S.C. 3501 et by the Patent and Trademark Office
seq.), the collection of information in for the national stage only if the appli-
this subpart has been reviewed and ap- cant is the inventor or other person as
proved by the Office of Management provided in § 1.422 or § 1.424. Joint in-
and Budget under control number 0651– ventors must jointly apply for an inter-
0021. national application.
136
(c) A registered attorney or agent of on proof of the pertinent facts and a

the applicant may sign the inter- showing that such action is appro-
national application Request and file priate to preserve the rights of the par-
the international application for the ties.
applicant. A separate power of attor- (b) Neither any showing required
ney from each applicant may be re- under paragraph (a) of this section nor
quired. documentary evidence of ownership or
(d) Any indication of different appli- proprietary interest will be required or
cants for the purpose of different Des- considered by the Office in the inter-
ignated Offices must be shown on the national stage, but will be required in
Request portion of the international the national stage in accordance with
application. the conditions and requirements of
(e) Requests for changes in the indi- § 1.46.
cations concerning the applicant,
[77 FR 48823, Aug. 14, 2012]
agent, or common representative of an
international application shall be made THE INTERNATIONAL APPLICATION
in accordance with PCT Rule 92bis and
may be required to be signed by all ap- § 1.431 International application re-
plicants. quirements.
(f) Requests for withdrawals of the (a) An international application shall
international application, designa- contain, as specified in the Treaty and
tions, priority claims, the Demand, or the Regulations, a Request, a descrip-
elections shall be made in accordance tion, one or more claims, an abstract,
with PCT Rule 90bis and must be signed and one or more drawings (where re-
by all applicants. A separate power of quired). (PCT Art. 3(2) and section 207
attorney from the applicants will be re- of the Administrative Instructions.)
quired for the purposes of any request (b) An international filing date will
for a withdrawal in accordance with be accorded by the United States Re-
PCT Rule 90bis which is not signed by ceiving Office, at the time to receipt of
all applicants. the international application, provided
[77 FR 48823, Aug. 14, 2012] that:
(1) At least one applicant (§ 1.421) is a
§ 1.422 Legal representative as appli- United States resident or national and
cant in an international applica- the papers filed at the time of receipt
tion. of the international application so in-
If an inventor is deceased or under dicate (35 U.S.C. 361(a), PCT Art.
legal incapacity, the legal representa- 11(1)(i)).
tive of the inventor may be an appli- (2) The international application is in
cant in an international application the English language (35 U.S.C. 361(c),
which designates the United States of PCT Art. 11(1)(ii)).
America. (3) The international application con-
[77 FR 48823, Aug. 14, 2012]
tains at least the following elements
(PCT Art. 11(1)(iii)):
§ 1.423 [Reserved] (i) An indication that it is intended
as an international application (PCT
§ 1.424 Assignee, obligated assignee, or Rule 4.2);
person having sufficient propri- (ii) The designation of at least one
etary interest as applicant in an Contracting State of the International
international application. Patent Cooperation Union (§ 1.432);
(a) A person to whom the inventor (iii) The name of the applicant, as
has assigned or is under an obligation prescribed (note §§ 1.421, 1.422, and
to assign the invention may be an ap- 1.424);
plicant in an international application (iv) A part which on the face of it ap-
which designates the United States of pears to be a description; and
America. A person who otherwise (v) A part which on the face of it ap-
shows sufficient proprietary interest in pears to be a claim.
the matter may be an applicant in an (c) Payment of the international fil-
international application which des- ing fee (PCT Rule 15.2) and the trans-
ignates the United States of America mittal and search fees (§ 1.445) may be
137
§ 1.432 37 CFR Ch. I (7–1–16 Edition)
made in full at the time the inter- each designated State to which PCT
national application papers required by Article 43 or 44 applies, for the grant of
paragraph (b) of this section are depos- every kind of protection which is avail-
ited or within one month thereafter. able by way of the designation of that
The international filing, transmittal, State; and
and search fee payable is the inter- (c) An indication that the inter-
national filing, transmittal, and search national application is, in respect of
fee in effect on the receipt date of the each designated State to which PCT
international application. Article 45(1) applies, for the grant of a
(1) If the international filing, trans- regional patent and also, unless PCT
mittal and search fees are not paid Article 45(2) applies, a national patent.
within one month from the date of re-
ceipt of the international application [68 FR 59887, Oct. 20, 2003]
and prior to the sending of a notice of
deficiency which imposes a late pay- § 1.433 Physical requirements of inter-
ment fee, applicant will be notified and national application.
given one month within which to pay (a) The international application and
the deficient fees plus the late pay- each of the documents that may be re-
ment fee. Subject to paragraph (c)(2) of ferred to in the check list of the Re-
this section, the late payment fee will quest (PCT Rule 3.3(a)(ii)) shall be filed
be equal to the greater of: in one copy only.
(i) Fifty percent of the amount of the (b) All sheets of the international ap-
deficient fees; or plication must be on A4 size paper (21.0
(ii) An amount equal to the trans- × 29.7 cm.).
mittal fee;
(c) Other physical requirements for
(2) The late payment fee shall not ex-
international applications are set forth
ceed an amount equal to fifty percent
of the international filing fee not tak- in PCT Rule 11 and sections 201–207 of
ing into account any fee for each sheet the Administrative Instructions.
of the international application in ex-
§ 1.434 The request.
cess of thirty sheets (PCT Rule 16bis).
(3) The one-month time limit set pur- (a) The request shall be made on a
suant to paragraph (c) of this section standardized form (PCT Rules 3 and 4).
to pay deficient fees may not be ex- Copies of printed Request forms are
tended. available from the United States Pat-
(d) If the payment needed to cover ent and Trademark Office. Letters re-
the transmittal fee, the international questing printed forms should be
filing fee, the search fee, and the late marked ‘‘Mail Stop PCT.’’
payment fee pursuant to paragraph (c) (b) The Check List portion of the Re-
of this section is not timely made in quest form should indicate each docu-
accordance with PCT Rule 16bis.1(e), ment accompanying the international
the Receiving Office will declare the application on filing.
international application withdrawn (c) All information, for example, ad-
under PCT Article 14(3)(a). dresses, names of States and dates,
[43 FR 20466, May 11, 1978, as amended at 50 shall be indicated in the Request as re-
FR 9383, Mar. 7, 1985; 52 FR 20047, May 28, quired by PCT Rule 4 and Administra-
1987; 58 FR 4344, Jan. 14, 1993; 63 FR 29618, tive Instructions 110 and 201.
June 1, 1998; 68 FR 59887, Oct. 20, 2003; 68 FR
67805, Dec. 4, 2003; 77 FR 48823, Aug. 14, 2012]
(d) For the purposes of the designa-
tion of the United States of America,
§ 1.432 Designation of States by filing an international application shall in-
an international application. clude:
The filing of an international appli- (1) The name of the inventor; and
cation request shall constitute: (2) A reference to any prior-filed na-
(a) The designation of all Contracting tional application or international ap-
States that are bound by the Treaty on plication designating the United States
the international filing date; of America, if the benefit of the filing
(b) An indication that the inter- date for the prior-filed application is to
national application is, in respect of be claimed.
138
(e) An international application may FEES

also include in the Request a declara-
tion of the inventors as provided for in § 1.445 International application filing,
processing and search fees.
PCT Rule 4.17(iv).
(a) The following fees and charges for
[43 FR 20466, May 11, 1978, as amended at 58 international applications are estab-
FR 4345, Jan. 14, 1993; 66 FR 16006, Mar. 22, lished by law or by the Director under
2001; 66 FR 67096, Dec. 28, 2001; 68 FR 14337,
the authority of 35 U.S.C. 376:
Mar. 25, 2003; 68 FR 59887, Oct. 20, 2003]
(1) A transmittal fee (see 35 U.S.C.
§ 1.435 The description. 361(d) and PCT Rule 14) consisting of:
(i) A basic portion:
(a) The application must meet the re- (A) For an international ap-
quirements as to the content and form plication having a receipt
of the description set forth in PCT date that is on or after
Rules 5, 9, 10, and 11 and sections 204 January 1, 2014:
and 208 of the Administrative Instruc- By a micro entity
tions. (§ 1.29) ........................ $60.00
(b) In international applications des- By a small entity
ignating the United States the descrip- (§ 1.27(a)) .................... $120.00
tion must contain upon filing an indi- By other than a small
cation of the best mode contemplated or micro entity .......... $240.00
by the inventor for carrying out the (B) For an international ap-
claimed invention. plication having a receipt
date that is before Janu-
[43 FR 20466, May 11, 1978, as amended at 63 ary 1, 2014 ........................ $240.00
FR 29618, June 1, 1998] (ii) A non-electronic filing
fee portion for any inter-
§ 1.436 The claims.
national application des-
The requirements as to the content ignating the United
and format of claims are set forth in States of America that is
PCT Art. 6 and PCT Rules 6, 9, 10 and filed on or after Novem-
11 and shall be adhered to. The number ber 15, 2011, other than by
of the claims shall be reasonable, con- the Office electronic fil-
sidering the nature of the invention ing system, except for a
claimed. plant application:
By a small entity
§ 1.437 The drawings. (§ 1.27(a)) .................... $200.00
By other than a small
(a) Drawings are required when they
entity ........................ $400.00
are necessary for the understanding of
(2) A search fee (see 35
the invention (PCT Art. 7). U.S.C. 361(d) and PCT
(b) The physical requirements for Rule 16):
drawings are set forth in PCT Rule 11 (i) For an international ap-
and shall be adhered to. plication having a receipt
[72 FR 51563, Sept. 10, 2007] date that is on or after
January 1, 2014:
§ 1.438 The abstract. By a micro entity
(§ 1.29) ........................ $520.00
(a) Requirements as to the content By a small entity
and form of the abstract are set forth (§ 1.27(a)) .................... $1,040.00
in PCT Rule 8, and shall be adhered to. By other than a small
(b) Lack of an abstract upon filing of or micro entity .......... $2,080.00
an international application will not (ii) For an international ap-
affect the granting of a filing date. plication having a receipt
However, failure to furnish an abstract date that is before Janu-
within one month from the date of the ary 1, 2014 ........................ $2,080.00
notification by the Receiving Office (3) A supplemental search
will result in the international fee when required, per ad-

appplication being declared withdrawn. ditional invention:
139
§ 1.446 37 CFR Ch. I (7–1–16 Edition)
(i) For an international ap- include a copy of that deposit account

plication having a receipt statement. The time periods set forth
date that is on or after in this paragraph are not extendable.
January 1, 2014: (c) Refund of the supplemental search
By a micro entity fees will be made if such refund is de-
(§ 1.29) ........................ $520.00 termined to be warranted by the Direc-
By a small entity tor or the Director’s designee acting
(§ 1.27(a)) .................... $1,040.00 under PCT Rule 40.2(c).
By other than a small (d) The international and search fees
or micro entity .......... $2,080.00 will be refunded if no international fil-
(ii) For an international ap- ing date is accorded or if the applica-
plication having a receipt tion is withdrawn before transmittal of
date that is before Janu- the record copy to the International
ary 1, 2014 ........................ $2,080.00 Bureau (PCT Rules 15.6 and 16.2). The
search fee will be refunded if the appli-
(4) A fee equivalent to the trans-
cation is withdrawn before transmittal
mittal fee in paragraph (a)(1) of this
of the search copy to the International
section that would apply if the USPTO
Searching Authority. The transmittal
was the Receiving Office for trans-
fee will not be refunded.
mittal of an international application
to the International Bureau for proc- (e) The handling fee (§ 1.482(b)) will be
essing in its capacity as a Receiving refunded (PCT Rule 57.6) only if:
Office (PCT Rule 19.4). (1) The Demand is withdrawn before
(b) The international filing fee shall the Demand has been sent by the Inter-
be as prescribed in PCT Rule 15. national Preliminary Examining Au-
thority to the International Bureau, or
[78 FR 17107, Mar. 20, 2013] (2) The Demand is considered not to
have been submitted (PCT Rule 54.4(a)).
§ 1.446 Refund of international appli-
cation filing and processing fees. (35 U.S.C. 6; 15 U.S.C. 1113, 1123)
(a) Money paid for international ap- [43 FR 20466, May 11, 1978, as amended at 50
plication fees, where paid by actual FR 9384, Mar. 7, 1985; 50 FR 31826, Aug. 6, 1985;
mistake or in excess, such as a pay- 58 FR 4345, Jan. 14, 1993; 65 FR 54677, Sept. 8,
ment not required by law or treaty and 2000]
its regulations, may be refunded. A
mere change of purpose after the pay- PRIORITY
ment of a fee will not entitle a party to
a refund of such fee. The Office will not § 1.451 The priority claim and priority
document in an international appli-
refund amounts of twenty-five dollars cation.
or less unless a refund is specifically
requested and will not notify the payor (a) The claim for priority must, sub-
of such amounts. If the payor or party ject to paragraph (d) of this section, be
requesting a refund does not provide made on the Request (PCT Rule 4.10) in
the banking information necessary for a manner complying with sections 110
making refunds by electronic funds and 115 of the Administrative Instruc-
transfer, the Office may use the bank- tions.
ing information provided on the pay- (b) Whenever the priority of an ear-
ment instrument to make any refund lier United States national application
by electronic funds transfer. or international application filed with
(b) Any request for refund under the United States Receiving Office is
paragraph (a) of this section must be claimed in an international applica-
filed within two years from the date tion, the applicant may request in the
the fee was paid. If the Office charges a Request or in a letter of transmittal
deposit account by an amount other accompanying the international appli-
than an amount specifically indicated cation upon filing with the United
in an authorization under § 1.25(b), any States Receiving Office or in a separate
request for refund based upon such letter filed in the United States Re-
ceiving Office not later than 16 months
charge must be filed within two years

from the date of the deposit account after the priority date, that the United
statement indicating such charge and States Patent and Trademark Office
140
prepare a certified copy of the prior ap- tional. The Director may require addi-
plication for transmittal to the Inter- tional information where there is a
national Bureau (PCT Article 8 and question whether the delay was unin-
PCT Rule 17). The fee for preparing a tentional.
certified copy is set forth in § 1.19(b)(1). (c) If the applicant makes a request
(c) If a certified copy of the priority for early publication under PCT Article
document is not submitted together 21(2)(b), any requirement under para-
with the international application on graph (b) of this section filed after the
filing, or, if the priority application technical preparations for inter-
was filed in the United States and a re-
national publication have been com-
quest and appropriate payment for
pleted by the International Bureau
preparation of such a certified copy do
not accompany the international appli- shall be considered as not having been
cation on filing or are not filed within submitted in time.
16 months of the priority date, the cer- [72 FR 51563, Sept. 10, 2007, as amended at 78
tified copy of the priority document FR 62407, Oct. 21, 2013]
must be furnished by the applicant to
the International Bureau or to the REPRESENTATION
United States Receiving Office within
the time limit specified in PCT Rule § 1.455 Representation in international
17.1(a). applications.
(d) The applicant may correct or add (a) Applicants of international appli-
a priority claim in accordance with cations may be represented by attor-
PCT Rule 26bis.1. neys or agents registered to practice
(35 U.S.C. 6; 15 U.S.C. 1113, 1123) before the United States Patent and
[43 FR 20466, May 11, 1978, as amended at 50 Trademark Office or by an applicant
FR 9384, Mar. 7, 1985; 50 FR 11366, Mar. 21, appointed as a common representative
1985; 54 FR 6903, Feb. 15, 1989; 58 FR 4345, Jan. (PCT Art. 49, Rules 4.8 and 90 and
14, 1993; 63 FR 29619, June 1, 1998; 66 FR 16006, § 11.9). If applicants have not appointed
Mar. 22, 2001] an attorney or agent or one of the ap-
plicants to represent them, and there is
§ 1.452 Restoration of right of priority.
more than one applicant, the applicant
(a) If the international application first named in the request and who is
has an international filing date which entitled to file in the U.S. Receiving
is later than the expiration of the pri- Office shall be considered to be the
ority period as defined by PCT Rule 2.4 common representative of all the appli-
but within two months from the expi- cants. An attorney or agent having the
ration of the priority period, the right right to practice before a national of-
of priority in the international applica- fice with which an international appli-
tion may be restored upon request if
cation is filed and for which the United
the delay in filing the international ap-
States is an International Searching
plication within the priority period
Authority or International Prelimi-
was unintentional.
nary Examining Authority may be ap-
(b) A request to restore the right of
priority in an international application pointed to represent the applicants in
under paragraph (a) of this section the international application before
must be filed not later than two that authority. An attorney or agent
months from the expiration of the pri- may appoint an associate attorney or
ority period and must include: agent who shall also then be of record
(1) A notice under PCT Rule 26bis.1(a) (PCT Rule 90.1(d)). The appointment of
adding the priority claim, if the pri- an attorney or agent, or of a common
ority claim in respect of the earlier ap- representative, revokes any earlier ap-
plication is not contained in the inter- pointment unless otherwise indicated
national application; (PCT Rule 90.6 (b) and (c)).
(2) The petition fee as set forth in (b) Appointment of an agent, attor-
§ 1.17(m); and ney or common representative (PCT
(3) A statement that the delay in fil- Rule 4.8) must be effected either in the
ing the international application with- Request form, signed by applicant, in

in the priority period was uninten- the Demand form, signed by applicant,
141
§ 1.461 37 CFR Ch. I (7–1–16 Edition)
or in a separate power of attorney sub- or if none, the international filing

mitted either to the United States Re- date.
ceiving Office or to the International (c) When corrections under PCT Art.
Bureau. 11(2), Art. 14(2) or PCT Rule 20.2(a) (i)
(c) Powers of attorney and revoca- or (iii) are timely submitted, and the
tions thereof should be submitted to date of receipt of such corrections falls
the United States Receiving Office later than one year from the claimed
until the issuance of the international priority date or dates, the Receiving
search report. Office shall proceed under PCT Rule
(d) The addressee for correspondence 26bis.2.
will be as indicated in section 108 of the
Administrative Instructions. [43 FR 20466, May 11, 1978, as amended at 63
FR 29619, June 1, 1998; 72 FR 51564, Sept. 10,
[43 FR 20466, May 11, 1978, as amended at 50 2007]
FR 5171, Feb. 6, 1985; 58 FR 4345, Jan. 14, 1993;
68 FR 59888, Oct. 20, 2003; 69 FR 35452, June 24, § 1.468 Delays in meeting time limits.
2004]
Delays in meeting time limits during
TRANSMITTAL OF RECORD COPY international processing of inter-
national applications may only be ex-
§ 1.461 Procedures for transmittal of cused as provided in PCT Rule 82. For
record copy to the International delays in meeting time limits in a na-
Bureau. tional application, see § 1.137.
(a) Transmittal of the record copy of
the international application to the AMENDMENTS
International Bureau shall be made by
the United States Receiving Office or § 1.471 Corrections and amendments
during international processing.
as provided by PCT Rule 19.4.
(b) [Reserved] (a) Except as otherwise provided in
(c) No copy of an international appli- this paragraph, all corrections sub-
cation may be transmitted to the mitted to the United States Receiving
International Bureau, a foreign Des- Office or United States International
ignated Office, or other foreign author- Searching Authority must be in
ity by the United States Receiving Of- English, in the form of replacement
fice or the applicant, unless the appli- sheets in compliance with PCT Rules 10
cable requirements of part 5 of this and 11, and accompanied by a letter
chapter have been satisfied. that draws attention to the differences
between the replaced sheets and the re-
placement sheets. Replacement sheets
FR 9384, Mar. 7, 1985; 63 FR 29619, June 1,
1998] are not required for the deletion of
lines of text, the correction of simple
TIMING typographical errors, and one addition
or change of not more than five words
§ 1.465 Timing of application proc- per sheet. These changes may be stated
essing based on the priority date. in a letter and, if appropriate, the
(a) For the purpose of computing United States Receiving Office will
time limits under the Treaty, the pri- make the deletion or transfer the cor-
ority date shall be defined as in PCT rection to the international applica-
Art. 2(xi). tion, provided that such corrections do
(b) When a claimed priority date is not adversely affect the clarity and di-
corrected under PCT Rule 26bis.1(a), or rect reproducibility of the application
a priority claim is added under PCT (PCT Rule 26.4). Amendments that do
Rule 26bis.1(a), withdrawn under PCT not comply with PCT Rules 10 and 11.1
Rule 90bis.3, or considered not to have to 11.13 may not be entered.
been made under PCT Rule 26bis.2, the (b) Amendments of claims submitted
priority date for the purposes of com- to the International Bureau shall be as
puting any non-expired time limits will prescribed by PCT Rule 46.
be the filing date of the earliest re- (c) Corrections or additions to the
maining priority claim under PCT Ar- Request of any declarations under PCT
ticle 8 of the international application, Rule 4.17 should be submitted to the
142
International Bureau as prescribed by product, and a use of the said product;

PCT Rule 26ter. or
(4) A process and an apparatus or
means specifically designed for car-
FR 29619, June 1, 1998; 66 FR 16006, Mar. 22,
2001]
rying out the said process; or
(5) A product, a process specially
§ 1.472 Changes in person, name, or adapted for the manufacture of the said
address of applicants and inven- product, and an apparatus or means
tors. specifically designed for carrying out
the said process.
All requests for a change in person, (c) If an application contains claims
name or address of applicants and in- to more or less than one of the com-
ventor be sent to the United States Re- binations of categories of invention set
ceiving Office until the time of forth in paragraph (b) of this section,
issuance of the international search re- unity of invention might not be
port. Thereafter requests for such present.
changes should be submitted to the (d) If multiple products, processes of
International Bureau. manufacture or uses are claimed, the
[43 FR 20466, May 11, 1978. Redesignated at 52 first invention of the category first
FR 20047, May 28, 1987] mentioned in the claims of the applica-
tion and the first recited invention of
UNITY OF INVENTION each of the other categories related
thereto will be considered as the main
§ 1.475 Unity of invention before the invention in the claims, see PCT Arti-
International Searching Authority, cle 17(3)(a) and § 1.476(c).
the International Preliminary Ex- (e) The determination whether a
amining Authority and during the
national stage. group of inventions is so linked as to
form a single general inventive concept
(a) An international and a national shall be made without regard to wheth-
stage application shall relate to one iner the inventions are claimed in sepa-
vention only or to a group of inven- rate claims or as alternatives within a
tions so linked as to form a single gen- single claim.
eral inventive concept (‘‘requirement
[58 FR 4345, Jan. 14, 1993]
of unity of invention’’). Where a group
of inventions is claimed in an applica- § 1.476 Determination of unity of in-
tion, the requirement of unity of inven- vention before the International
tion shall be fulfilled only when there Searching Authority.
is a technical relationship among those (a) Before establishing the inter-
inventions involving one or more of the national search report, the Inter-
same or corresponding special tech- national Searching Authority will de-
nical features. The expression ‘‘special termine whether the international ap-
technical features’’ shall mean those plication complies with the require-
technical features that define a con- ment of unity of invention as set forth
tribution which each of the claimed in- in § 1.475.
ventions, considered as a whole, makes (b) If the International Searching Au-
over the prior art. thority considers that the inter-
(b) An international or a national national application does not comply
stage application containing claims to with the requirement of unity of inven-
different categories of invention will be tion, it shall inform the applicant ac-
considered to have unity of invention if cordingly and invite the payment of
the claims are drawn only to one of the additional fees (note § 1.445 and PCT
following combinations of categories: Art. 17(3)(a) and PCT Rule 40). The ap-
(1) A product and a process specially plicant will be given a time period in
adapted for the manufacture of said accordance with PCT Rule 40.3 to pay
product; or the additional fees due.
(2) A product and a process of use of (c) In the case of non-compliance
said product; or with unity of invention and where no
(3) A product, a process specially additional fees are paid, the inter-
adapted for the manufacture of the said national search will be performed on
143
§ 1.477 37 CFR Ch. I (7–1–16 Edition)
the invention first mentioned (‘‘main INTERNATIONAL PRELIMINARY

invention’’) in the claims. EXAMINATION
(d) Lack of unity of invention may be
directly evident before considering the § 1.480 Demand for international pre-
liminary examination.
claims in relation to any prior art, or
after taking the prior art into consid- (a) On the filing of a proper Demand
eration, as where a document discov- in an application for which the United
ered during the search shows the inven- States International Preliminary Ex-
tion claimed in a generic or linking amining Authority is competent and
for which the fees have been paid, the
claim lacks novelty or is clearly obvi-
international application shall be the
ous, leaving two or more claims joined
subject of an international preliminary
thereby without a common inventive
examination. The preliminary exam-
concept. In such a case the Inter- ination fee (§ 1.482(a)(1)) and the han-
national Searching Authority may dling fee (§ 1.482(b)) shall be due within
raise the objection of lack of unity of the applicable time limit set forth in
invention. PCT Rule 57.3.
[43 FR 20466, May 11, 1978. Redesignated and (b) The Demand shall be made on a
amended at 52 FR 20048, May 28, 1987; 58 FR standardized form (PCT Rule 53). Cop-
4346, Jan. 14, 1993] ies of the printed Demand forms are
available from the United States Pat-
§ 1.477 Protest to lack of unity of in- ent and Trademark Office. Letters re-
vention before the International questing printed Demand forms should
Searching Authority. be marked ‘‘Mail Stop PCT.’’
(a) If the applicant disagrees with the (c) Withdrawal of a proper Demand
holding of lack of unity of invention by prior to the start of the international
the International Searching Authority, preliminary examination will entitle
additional fees may be paid under pro- applicant to a refund of the prelimi-
nary examination fee minus the
test, accompanied by a request for re-
amount of the transmittal fee set forth
fund and a statement setting forth rea-
in § 1.445(a)(1).
sons for disagreement or why the re-
(d) The filing of a Demand shall con-
quired additional fees are considered stitute the election of all Contracting
excessive, or both (PCT Rule 40.2(c)). States which are designated and are
(b) Protest under paragraph (a) of bound by Chapter II of the Treaty on
this section will be examined by the the international filing date (PCT Rule
Director or the Director’s designee. In 53.7).
the event that the applicant’s protest (e) Any Demand filed after the expi-
is determined to be justified, the addi- ration of the applicable time limit set
tional fees or a portion thereof will be forth in PCT Rule 54bis.1(a) shall be
refunded. considered as if it had not been sub-
(c) An applicant who desires that a mitted (PCT Rule 54bis.1(b)).
copy of the protest and the decision [52 FR 20048, May 28, 1987, as amended at 53
thereon accompany the international FR 47810, Nov. 28, 1988; 58 FR 4346, Jan. 14,
search report when forwarded to the 1993; 63 FR 29619, June 1, 1998; 67 FR 523, Jan.
Designated Offices, may notify the 4, 2002; 68 FR 14337, Mar. 25, 2003; 68 FR 59888,
International Searching Authority to Oct. 20, 2003]
that effect any time prior to the § 1.481 Payment of international pre-
issuance of the international search re- liminary examination fees.
port. Thereafter, such notification
(a) The handling and preliminary ex-
should be directed to the International
amination fees shall be paid within the
Bureau (PCT Rule 40.2(c)).
time period set in PCT Rule 57.3. The
[43 FR 20466, May 11, 1978. Redesignated and handling fee or preliminary examina-
amended at 52 FR 20048, May 28, 1987] tion fee payable is the handling fee or
preliminary examination fee in effect
on the date of payment.
(1) If the handling and preliminary

examination fees are not paid within
144
the time period set in PCT Rule 57.3, (ii) If the International
applicant will be notified and given one Searching Authority for
month within which to pay the defi- the international applica-
cient fees plus a late payment fee equal tion was an authority
to the greater of: other than the United
(i) Fifty percent of the amount of the States Patent and Trade-
deficient fees, but not exceeding an mark Office:
amount equal to double the handling (A) For an international
fee; or preliminary examination
(ii) An amount equal to the handling fee paid on or after Janu-
fee (PCT Rule 58bis.2). ary 1, 2014:
(2) The one-month time limit set in By a micro entity
this paragraph to pay deficient fees (§ 1.29) ........................ $190.00
may not be extended. By a small entity
(b) If the payment needed to cover (§ 1.27(a)) .................... $380.00
the handling and preliminary examina- By other than a small
tion fees, pursuant to paragraph (a) of or micro entity .......... $760.00
this section, is not timely made in ac- (B) For an international
cordance with PCT Rule 58bis.1(d), the preliminary examination
United States International Prelimi- fee paid before January 1,
nary Examination Authority will de- 2014 $750.00.
clare the Demand to be considered as if (2) An additional prelimi-
it had not been submitted. nary examination fee
when required, per addi-
[63 FR 29619, June 1, 1998, as amended at 68 tional invention:
FR 59888, Oct. 20, 2003] (i) If the international pre-
liminary examination fee
§ 1.482 International preliminary ex- set forth in paragraph
amination fees. (a)(1) of this section was
(a) The following fees and charges for paid on or after January
international preliminary examination 1, 2014:
are established by the Director under By a micro entity
the authority of 35 U.S.C. 376: (§ 1.29) ........................ $150.00
(1) The following preliminary exam- By a small entity
ination fee is due on filing the Demand: (§ 1.27(a)) .................... $300.00
(i) If an international search fee as By other than a small
set forth in § 1.445(a)(2) has been paid on or micro entity .......... $600.00
the international application to the (ii) If the international pre-
United States Patent and Trademark liminary examination fee
Office as an International Searching set forth in paragraph
Authority: (a)(1) of this section was
paid before January 1,
(A) For an international 2014 .................................. $600.00
preliminary examination
fee paid on or after Janu- (b) The handling fee is due on filing
ary 1, 2014: the Demand and shall be prescribed in
By a micro entity PCT Rule 57.
(§ 1.29) ........................ $150.00
[78 FR 17107, Mar. 20, 2013]
By a small entity
(§ 1.27(a)) .................... $300.00 § 1.484 Conduct of international pre-
By other than a small liminary examination.
or micro entity .......... $600.00
(a) An international preliminary ex-
(B) For an international
amination will be conducted to formu-
preliminary examination
late a non-binding opinion as to wheth-
fee paid before January 1,
er the claimed invention has novelty,
2014 .................................. $600.00

involves an inventive step (is non-obvi-
ous) and is industrially applicable.
145
§ 1.485 37 CFR Ch. I (7–1–16 Edition)
(b) International preliminary exam- (i) If the application whose priority is

ination will begin in accordance with claimed in the international applica-
PCT Rule 69.1. tion is in a language other than
(c) No international preliminary ex- English, the United States Inter-
amination will be conducted on inven- national Preliminary Examining Au-
tions not previously searched by an thority may, where the validity of the
International Searching Authority. priority claim is relevant for the for-
(d) The International Preliminary mulation of the opinion referred to in
Examining Authority will establish a Article 33(1), invite the applicant to
written opinion if any defect exists or furnish an English translation of the
if the claimed invention lacks novelty, priority document within two months
inventive step or industrial applica- from the date of the invitation. If the
bility and will set a non-extendable translation is not furnished within
time limit in the written opinion for that time limit, the international pre-
the applicant to reply. liminary report may be established as
(e) The written opinion established if the priority had not been claimed.
by the International Searching Author-
ity under PCT Rule 43bis.1 shall be con- [52 FR 20049, May 28, 1987, as amended at 58
sidered to be a written opinion of the FR 4346, Jan. 14, 1993; 62 FR 53199, Oct. 10,
United States International Prelimi- 1997; 63 FR 29619, June 1, 1998; 66 FR 16006,
Mar. 22, 2001; 68 FR 59888, Oct. 20, 2003]
nary Examining Authority for the pur-
poses of paragraph (d) of this section. § 1.485 Amendments by applicant dur-
(f) The International Preliminary Ex- ing international preliminary exam-
amining Authority may establish fur- ination.
ther written opinions under paragraph
(d) of this section. The applicant may make amend-
ments at the time of filing the De-
(g) If no written opinion under para-
graph (d) of this section is necessary, mand. The applicant may also make
or if no further written opinion under amendments within the time limit set
paragraph (f) of this section is to be es- by the International Preliminary Ex-
tablished, or after any written opinion amining Authority for reply to any no-
and the reply thereto or the expiration tification under § 1.484(b) or to any
of the time limit for reply to such writ- written opinion. Any such amendments
ten opinion, an international prelimi- must be made in accordance with PCT
nary examination report will be estab- Rule 66.8.
lished by the International Prelimi- [74 FR 31373, July 1, 2009]
nary Examining Authority. One copy
will be submitted to the International § 1.488 Determination of unity of in-
Bureau and one copy will be submitted vention before the International
to the applicant. Preliminary Examining Authority.
(h) An applicant will be permitted a (a) Before establishing any written
personal or telephone interview with opinion or the international prelimi-
the examiner, which may be requested nary examination report, the Inter-
after the filing of a Demand, and must national Preliminary Examining Au-
be conducted during the period between
thority will determine whether the
the establishment of the written opin-
international application complies
ion and the establishment of the inter-
with the requirement of unity of inven-
national preliminary examination re-
tion as set forth in § 1.475.
port. Additional interviews may be
conducted where the examiner deter- (b) If the International Preliminary
mines that such additional interviews Examining Authority considers that
may be helpful to advancing the inter- the international application does not
national preliminary examination pro- comply with the requirement of unity
cedure. A summary of any such per- of invention, it may:
sonal or telephone interview must be (1) Issue a written opinion and/or an
filed by the applicant or, if not filed by international preliminary examination
applicant be made of record in the file report, in respect of the entire inter-
by the examiner. national application and indicate that
146
unity of invention is lacking and speci- why the required additional fees are
fy the reasons therefor without extend- considered excessive, or both.
ing an invitation to restrict or pay ad- (b) Protest under paragraph (a) of
ditional fees. No international prelimi- this section will be examined by the
nary examination will be conducted on Director or the Director’s designee. In
inventions not previously searched by the event that the applicant’s protest
an International Searching Authority. is determined to be justified, the addi-
(2) Invite the applicant to restrict tional fees or a portion thereof will be
the claims or pay additional fees, refunded.
pointing out the categories of inven- (c) An applicant who desires that a
tion found, within a set time limit copy of the protest and the decision
which will not be extended. No inter- thereon accompany the international
national preliminary examination will preliminary examination report when
be conducted on inventions not pre- forwarded to the Elected Offices, may
viously searched by an International notify the International Preliminary
Searching Authority, or Examining Authority to that effect
(3) If applicant fails to restrict the any time prior to the issuance of the
claims or pay additional fees within international preliminary examination
the time limit set for reply, the Inter- report. Thereafter, such notification
national Preliminary Examining Au- should be directed to the International
thority will issue a written opinion Bureau.
and/or establish an international pre-
[52 FR 20050, May 28, 1987]
liminary examination report on the
main invention and shall indicate the NATIONAL STAGE
relevant facts in the said report. In
case of any doubt as to which invention § 1.491 National stage commencement,
is the main invention, the invention entry, and fulfillment.
first mentioned in the claims and pre- (a) Subject to 35 U.S.C. 371(f), the na-
viously searched by an International tional stage shall commence with the
Searching Authority shall be consid- expiration of the applicable time limit
ered the main invention. under PCT Article 22 (1) or (2), or under
(c) Lack of unity of invention may be PCT Article 39(1)(a).
directly evident before considering the (b) An international application en-
claims in relation to any prior art, or ters the national stage when the appli-
after taking the prior art into consid- cant has filed the documents and fees
eration, as where a document discov- required by 35 U.S.C. 371(c)(1) and (c)(2)
ered during the search shows the inven- within the period set in § 1.495.
tion claimed in a generic or linking (c) An international application ful-
claim lacks novelty or is clearly obvi- fills the requirements of 35 U.S.C. 371
ous, leaving two or more claims joined when the national stage has com-
thereby without a common inventive menced under 35 U.S.C. 371(b) or (f) and
concept. In such a case the Inter- all applicable requirements of 35 U.S.C.
national Preliminary Examining Au- 371 have been satisfied.
thority may raise the objection of lack
of unity of invention. [67 FR 523, Jan. 4, 2002, as amended at 77 FR
48823, Aug. 14, 2012]
FR 4346, Jan. 14, 1993; 62 FR 53200, Oct. 10, § 1.492 National stage fees.
1997]
The following fees and charges are es-
§ 1.489 Protest to lack of unity of in- tablished for international applications
vention before the International entering the national stage under 35
Preliminary Examining Authority. U.S.C. 371:
(a) If the applicant disagrees with the (a) The basic national fee for an
holding of lack of unity of invention by international application entering the
the International Preliminary Exam- national stage under 35 U.S.C. 371:
ining Authority, additional fees may be By a micro entity (§ 1.29) .... $70.00
paid under protest, accompanied by a By a small entity (§ 1.27(a)) 140.00
request for refund and a statement set- By other than a small or

ting forth reasons for disagreement or micro entity .................... 280.00
147
§ 1.492 37 CFR Ch. I (7–1–16 Edition)
(b) Search fee for an international United States International Prelimi-

application entering the national stage nary Examining Authority or a written
under 35 U.S.C. 371: opinion on the international applica-
(1) If an international preliminary tion prepared by the United States
examination report on the inter- International Searching Authority
national application prepared by the states that the criteria of novelty, in-
United States International Prelimi- ventive step (non-obviousness), and in-
nary Examining Authority or a written dustrial applicability, as defined in
opinion on the international applica- PCT Article 33 (1) to (4) have been sat-
tion prepared by the United States isfied for all of the claims presented in
International Searching Authority the application entering the national
states that the criteria of novelty, in- stage:
ventive step (non-obviousness), and in- By a micro entity (§ 1.29) .... $0.00
dustrial applicability, as defined in By a small entity (§ 1.27(a)) 0.00
PCT Article 33(1) to (4) have been satis- By other than a small or
fied for all of the claims presented in micro entity .................... 0.00
the application entering the national
(2) In all situations not provided for
stage:
in paragraph (c)(1) of this section:
By a micro entity (§ 1.29) .... $0.00 By a micro entity (§ 1.29) $180.00.
By a small entity (§ 1.27(a)) 0.00 By a small entity (§ 1.27(a)) $360.00
micro entity .................... 0.00 micro entity .................... 720.00
(2) If the search fee as set forth in (d) In addition to the basic national
§ 1.445(a)(2) has been paid on the inter- fee, for filing or on later presentation
national application to the United at any other time of each claim in
States Patent and Trademark Office as independent form in excess of 3:
an International Searching Authority:
By a micro entity (§ 1.29) .... $105.00
By a micro entity (§ 1.29) .... $30.00 By a small entity (§ 1.27(a)) 210.00
By a small entity (§ 1.27(a)) 60.00 By other than a small or
By other than a small or micro entity .................... 420.00
micro entity .................... 120.00
(e) In addition to the basic national
(3) If an international search report fee, for filing or on later presentation
on the international application has at any other time of each claim
been prepared by an International (whether dependent or independent) in
Searching Authority other than the excess of 20 (note that § 1.75(c) indicates
United States International Searching how multiple dependent claims are
Authority and is provided, or has been considered for fee calculation pur-
previously communicated by the Inter- poses):
national Bureau, to the Office:
By a micro entity (§ 1.29) .... $20.00
By a micro entity (§ 1.29) .... $120.00 By a small entity (§ 1.27(a)) 40.00
By a small entity (§ 1.27(a)) 240.00 By other than a small or
By other than a small or micro entity .................... 80.00
micro entity .................... 480.00
(f) In addition to the basic national
(4) In all situations not provided for fee, if the application contains, or is
in paragraphs (b)(1), (2), or (3) of this amended to contain, a multiple depend-
section: ent claim, per application:
By a micro entity (§ 1.29) .... $150.00 By a micro entity (§ 1.29) .... $195.00
By a small entity (§ 1.27(a)) 300.00 By a small entity (§ 1.27(a)) 390.00
micro entity .................... 600.00 micro entity .................... 780.00
(c) The examination fee for an inter- (g) If the excess claims fees required
national application entering the na- by paragraphs (d) and (e) of this section
tional stage under 35 U.S.C. 371: and multiple dependent claim fee re-
(1) If an international preliminary quired by paragraph (f) of this section
examination report on the inter- are not paid with the basic national fee
national application prepared by the or on later presentation of the claims
148
for which excess claims or multiple de- tion of thirty months from the priority
pendent claim fees are due, the fees re- date:
quired by paragraphs (d), (e), and (f) of (1) A copy of the international appli-
this section must be paid or the claims cation, unless it has been previously
canceled by amendment prior to the communicated by the International
expiration of the time period set for Bureau or unless it was originally filed
reply by the Office in any notice of fee in the United States Patent and Trade-
deficiency in order to avoid abandon- mark Office; and
ment. (2) The basic national fee (see
(h) Surcharge for filing any of the § 1.492(a)).
search fee, the examination fee, or the (c)(1) If applicant complies with para-
oath or declaration after the date of graph (b) of this section before expira-
the commencement of the national tion of thirty months from the priority
stage (§ 1.491(a)) pursuant to § 1.495(c): date, the Office will notify the appli-
By a micro entity (§ 1.29) .... $35.00 cant if he or she has omitted any of:
By a small entity (§ 1.27(a)) 70.00 (i) A translation of the international
By other than a small or application, as filed, into the English
micro entity .................... 140.00 language, if it was originally filed in
another language and if any English
(i) For filing an English translation language translation of the publication
of an international application or any of the international application pre-
annexes to an international prelimi- viously submitted under 35 U.S.C.
nary examination report later than 154(d) (§ 1.417) is not also a translation
thirty months after the priority date of the international application as filed
(§ 1.495(c) and (e)): (35 U.S.C. 371(c)(2));
By a micro entity (§ 1.29) .... $35.00 (ii) The inventor’s oath or declara-
By a small entity (§ 1.27(a)) 70.00 tion (35 U.S.C. 371(c)(4) and § 1.497), if a
By other than a small or declaration of inventorship in compli-
micro entity .................... 140.00 ance with § 1.63 has not been previously
submitted in the international applica-
(j) Application size fee for any inter- tion under PCT Rule 4.17(iv) within the
national application, the specification time limits provided for in PCT Rule
and drawings of which exceed 100 26ter.1;
sheets of paper, for each additional 50 (iii) The search fee set forth in
sheets or fraction thereof: § 1.492(b);
By a micro entity (§ 1.29) .... $100.00 (iv) The examination fee set forth in
By a small entity (§ 1.27(a)) 200.00 § 1.492(c); and
By other than a small or (v) Any application size fee required
micro entity .................... 400.00 by § 1.492(j).
(2) A notice under paragraph (c)(1) of
[78 FR 4290, Jan. 18, 2013] this section will set a time period with-
in which applicant must provide any
§ 1.495 Entering the national stage in omitted translation, search fee set
the United States of America. forth in § 1.492(b), examination fee set
(a) The applicant in an international forth in § 1.492(c), and any application
application must fulfill the require- size fee required by § 1.492(j) in order to
ments of 35 U.S.C. 371 within the time avoid abandonment of the application.
periods set forth in paragraphs (b) and (3) The inventor’s oath or declaration
(c) of this section in order to prevent must also be filed within the period
the abandonment of the international specified in paragraph (c)(2) of this sec-
application as to the United States of tion, except that the filing of the in-
America. The thirty-month time period ventor’s oath or declaration may be
set forth in paragraphs (b), (c), (d), (e) postponed until the application is oth-
and (h) of this section may not be ex- erwise in condition for allowance under
tended. the conditions specified in paragraphs
(b) To avoid abandonment of the ap- (c)(3)(i) through (c)(3)(iii) of this sec-
plication, the applicant shall furnish to tion.
the United States Patent and Trade- (i) The application contains an appli-
mark Office not later than the expira- cation data sheet in accordance with
149
§ 1.495 37 CFR Ch. I (7–1–16 Edition)
§ 1.76 filed prior to the expiration of the complies with PCT Rule 12.1(d) and the
time period set in any notice under description complies with PCT Rule
paragraph (c)(1) identifying: 5.2(b).
(A) Each inventor by his or her legal (d) A copy of any amendments to the
name; claims made under PCT Article 19, and
(B) A mailing address where the in- a translation of those amendments into
ventor customarily receives mail, and English, if they were made in another
residence, if an inventor lives at a loca- language, must be furnished not later
tion which is different from where the than the expiration of thirty months
inventor customarily receives mail, for from the priority date. Amendments
each inventor.
under PCT Article 19 which are not re-
(ii) The applicant must file each re-
ceived by the expiration of thirty
quired oath or declaration in compli-
ance with § 1.63, or substitute state- months from the priority date will be
ment in compliance with § 1.64, no later considered to be canceled.
than the date on which the issue fee for (e) A translation into English of any
the patent is paid. If the applicant is annexes to an international prelimi-
notified in a notice of allowability that nary examination report (if applica-
an oath or declaration in compliance ble), if the annexes were made in an-
with § 1.63, or substitute statement in other language, must be furnished not
compliance with § 1.64, executed by or later than the expiration of thirty
with respect to each named inventor months from the priority date. Trans-
has not been filed, the applicant must lations of the annexes which are not re-
file each required oath or declaration ceived by the expiration of thirty
in compliance with § 1.63, or substitute months from the priority date may be
statement in compliance with § 1.64, no submitted within any period set pursu-
later than the date on which the issue ant to paragraph (c) of this section ac-
fee is paid to avoid abandonment. This companied by the processing fee set
time period is not extendable under forth in § 1.492(f). Annexes for which
§ 1.136 (see § 1.136(c)). The Office may translations are not timely received
dispense with the notice provided for in will be considered canceled.
paragraph (c)(1) of this section if each
(f) Verification of the translation of
required oath or declaration in compli-
the international application or any
ance with § 1.63, or substitute state-
ment in compliance with § 1.64, has other document pertaining to an inter-
been filed before the application is in national application may be required
condition for allowance. where it is considered necessary, if the
(iii) An international application in international application or other doc-
which the basic national fee under 35 ument was filed in a language other
U.S.C. 41(a)(1)(F) has been paid and for than English.
which an application data sheet in ac- (g) The documents and fees sub-
cordance with § 1.76 has been filed may mitted under paragraphs (b) and (c) of
be treated as complying with 35 U.S.C. this section must be identified as a
371 for purposes of eighteen-month pub- submission to enter the national stage
lication under 35 U.S.C. 122(b) and under 35 U.S.C. 371. If the documents
§ 1.211 et seq. and fees contain conflicting indications
(4) The payment of the processing fee as between an application under 35
set forth in § 1.492(i) is required for ac- U.S.C. 111 and a submission to enter
ceptance of an English translation the national stage under 35 U.S.C. 371,
later than the expiration of thirty the documents and fees will be treated
months after the priority date. The as a submission to enter the national
payment of the surcharge set forth in stage under 35 U.S.C. 371.
§ 1.492(h) is required for acceptance of (h) An international application be-
any of the search fee, the examination
comes abandoned as to the United
fee, or the inventor’s oath or declara-
States thirty months from the priority
tion after the date of the commence-
ment of the national stage (§ 1.491(a)). date if the requirements of paragraph
(5) A ‘‘Sequence Listing’’ need not be

translated if the ‘‘Sequence Listing’’
150
(b) of this section have not been com- § 1.63(d), submission of the copy of the
plied with within thirty months from previously executed oath, declaration,
the priority date. or substitute statement under
§ 1.63(d)(1) is required to comply with 35
FR 4347, Jan. 14, 1993; 63 FR 29620, June 1, U.S.C. 371(c)(4).
1998; 65 FR 57060, Sept. 20, 2000; 67 FR 523, (c) If an oath or declaration under
Jan. 4, 2002; 68 FR 71007, Dec. 22, 2003; 70 FR § 1.63, or substitute statement under
3892, Jan. 27, 2005; 70 FR 30365, May 26, 2005; § 1.64, meeting the requirements of
72 FR 46843, Aug. 21, 2007; 74 FR 52691, Oct. 14, § 1.497(b) does not also meet the re-
2009; 77 FR 48824, Aug. 14, 2012; 78 FR 62407, quirements of § 1.63 or § 1.64, an oath,
Oct. 21, 2013] declaration, substitute statement, or
§ 1.496 Examination of international application data sheet in accordance
applications in the national stage. with § 1.76 to comply with § 1.63 or § 1.64
will be required.
National stage applications having
paid therein the search fee as set forth [77 FR 48824, Aug. 14, 2012]
in § 1.492(b)(1) and examination fee as
set forth in § 1.492(c)(1) may be amended § 1.499 Unity of invention during the
national stage.
subsequent to the date of commence-
ment of national stage processing only If the examiner finds that a national
to the extent necessary to eliminate stage application lacks unity of inven-
objections as to form or to cancel re- tion under § 1.475, the examiner may in
jected claims. Such national stage ap- an Office action require the applicant
plications will be advanced out of turn in the response to that action to elect
for examination. the invention to which the claims shall
be restricted. Such requirement may be
[77 FR 48824, Aug. 14, 2012] made before any action on the merits
§ 1.497 Inventor’s oath or declaration but may be made at any time before
under 35 U.S.C. 371(c)(4). the final action at the discretion of the
examiner. Review of any such require-
(a) When an applicant of an inter- ment is provided under §§ 1.143 and
national application desires to enter 1.144.
the national stage under 35 U.S.C. 371
pursuant to § 1.495, and a declaration in [58 FR 4347, Jan. 14, 1993]
compliance with § 1.63 has not been pre-
viously submitted in the international Subpart D—Ex Parte
application under PCT Rule 4.17(iv) Reexamination of Patents
within the time limits provided for in
PCT Rule 26ter.1, the applicant must SOURCE: 46 FR 29185, May 29, 1981, unless
file the inventor’s oath or declaration. otherwise noted.
The inventor, or each individual who is
a joint inventor of a claimed invention, CITATION OF PRIOR ART AND WRITTEN
in an application for patent must exe- STATEMENTS
cute an oath or declaration in accord-
ance with the conditions and require- § 1.501 Citation of prior art and writ-
ments of § 1.63, except as provided for in ten statements in patent files.
§ 1.64. (a) Information content of submission:
(b) An oath or declaration under § 1.63 At any time during the period of en-
will be accepted as complying with 35 forceability of a patent, any person
U.S.C. 371(c)(4) if it complies with the may file a written submission with the
requirements of §§ 1.63(a), (c) and (g). A Office under this section, which is di-
substitute statement under § 1.64 will rected to the following information:
be accepted as complying with 35 (1) Prior art consisting of patents or
U.S.C. 371(c)(4) if it complies with the printed publications which the person
requirements of §§ 1.64(b)(1), (c) and (e) making the submission believes to
and identifies the person executing the have a bearing on the patentability of
substitute statement. If a newly exe- any claim of the patent; or
cuted inventor’s oath or declaration (2) Statements of the patent owner
under § 1.63 or substitute statement filed by the patent owner in a pro-

under § 1.64 is not required pursuant to ceeding before a Federal court or the
151
§ 1.502 37 CFR Ch. I (7–1–16 Edition)
Office in which the patent owner took (e) Certificate of Service: A submission
a position on the scope of any claim of under this section by a person other
the patent. Any statement submitted than the patent owner must include a
under this paragraph must be accom- certification that a copy of the submis-
panied by any other documents, plead- sion was served in its entirety upon
ings, or evidence from the proceeding patent owner at the address as pro-
in which the statement was filed that vided for in § 1.33 (c). A submission by a
address the written statement, and person other than the patent owner
such statement and accompanying in- that fails to include proper proof of
formation under this paragraph must service as required by § 1.248(b) will not
be submitted in redacted form to ex- be entered into the patent file.
clude information subject to an appli- [77 FR 46626, Aug. 6, 2012]
cable protective order.
(3) Submissions under paragraph § 1.502 Processing of prior art cita-
(a)(2) of this section must identify: tions during an ex parte reexamina-
(i) The forum and proceeding in tion proceeding.
which patent owner filed each state- Citations by the patent owner under
ment; § 1.555 and by an ex parte reexamination
(ii) The specific papers and portions requester under either § 1.510 or § 1.535
of the papers submitted that contain will be entered in the reexamination
the statements; and file during a reexamination proceeding.
(iii) How each statement submitted is The entry in the patent file of citations
a statement in which patent owner submitted after the date of an order to
took a position on the scope of any reexamine pursuant to § 1.525 by per-
claim in the patent. sons other than the patent owner, or an
(b) Explanation: A submission pursu- ex parte reexamination requester under
ant to paragraph (a) of this section: either § 1.510 or § 1.535, will be delayed
(1) Must include an explanation in until the reexamination proceeding has
writing of the pertinence and manner been concluded by the issuance and
of applying any prior art submitted publication of a reexamination certifi-
under paragraph (a)(1) of this section cate. See § 1.902 for processing of prior
and any written statement and accom- art citations in patent and reexamina-
panying information submitted under tion files during an inter partes reexam-
paragraph (a)(2) of this section to at ination proceeding filed under § 1.913.
least one claim of the patent, in order [72 FR 18905, Apr. 16, 2007]
for the submission to become a part of
the official file of the patent; and REQUEST FOR Ex Parte REEXAMINATION
(2) May, if the submission is made by
the patent owner, include an expla- § 1.510 Request for ex parte reexam-
nation of how the claims differ from ination.
any prior art submitted under para- (a) Any person may, at any time dur-
graph (a)(1) of this section or any writing the period of enforceability of a
ten statements and accompanying in- patent, file a request for an ex parte re-
formation submitted under paragraph examination by the Office of any claim
(a)(2) of this section. of the patent on the basis of prior art
(c) Reexamination pending: If a reex- patents or printed publications cited
amination proceeding has been re- under § 1.501, unless prohibited by 35
quested and is pending for the patent U.S.C. 315(e)(1) or 35 U.S.C. 325(e)(1).
in which the submission is filed, entry The request must be accompanied by
of the submission into the official file the fee for requesting reexamination
of the patent is subject to the provi- set in § 1.20(c)(1).
sions of §§ 1.502 and 1.902. (b) Any request for reexamination
(d) Identity: If the person making the must include the following parts:
submission wishes his or her identity (1) A statement pointing out each
to be excluded from the patent file and substantial new question of patent-
kept confidential, the submission pa- ability based on prior patents and
pers must be submitted anonymously printed publications.
without any identification of the per- (2) An identification of every claim

son making the submission. for which reexamination is requested,
152
and a detailed explanation of the notice will result in the ex parte reex-
pertinency and manner of applying the amination request not being granted a
cited prior art to every claim for which filing date, and will result in place-
reexamination is requested. For each ment of the request in the patent file
statement of the patent owner and ac- as a citation if it complies with the re-
companying information submitted quirements of § 1.501.
pursuant to § 1.501(a)(2) which is relied (d) The filing date of the request for
upon in the detailed explanation, the ex parte reexamination is the date on
request must explain how that state- which the request satisfies all the re-
ment is being used to determine the quirements of this section.
proper meaning of a patent claim in (e) A request filed by the patent
connection with the prior art applied owner may include a proposed amend-
to that claim and how each relevant ment in accordance with § 1.530.
claim is being interpreted. If appro- (f) If a request is filed by an attorney
priate, the party requesting reexamina- or agent identifying another party on
tion may also point out how claims dis- whose behalf the request is being filed,
tinguish over cited prior art. the attorney or agent must have a
(3) A copy of every patent or printed power of attorney from that party or
publication relied upon or referred to be acting in a representative capacity
in paragraph (b) (1) and (2) of this sec- pursuant to § 1.34.
tion accompanied by an English lan- (35 U.S.C. 6; 15 U.S.C. 1113, 1123)
guage translation of all the necessary
and pertinent parts of any non-English [46 FR 29185, May 29, 1981, as amended at 47
FR 41282, Sept. 17, 1982; 62 FR 53200, Oct. 10,
language patent or printed publication. 1997; 65 FR 54678, Sept. 8, 2000; 65 FR 76775,
(4) A copy of the entire patent includ- Dec. 7, 2000; 71 FR 9262, Feb. 23, 2006; 71 FR
ing the front face, drawings, and speci- 44223, Aug. 4, 2006; 72 FR 18905, Apr. 16, 2007;
fication/claims (in double column for- 77 FR 46626, Aug. 6, 2012]
mat) for which reexamination is re-
quested, and a copy of any disclaimer, § 1.515 Determination of the request
certificate of correction, or reexamina- for ex parte reexamination.
tion certificate issued in the patent. (a) Within three months following
All copies must have each page plainly the filing date of a request for an ex
written on only one side of a sheet of parte reexamination, an examiner will
paper. consider the request and determine
(5) A certification that a copy of the whether or not a substantial new ques-
request filed by a person other than the tion of patentability affecting any
patent owner has been served in its en- claim of the patent is raised by the re-
tirety on the patent owner at the ad- quest and the prior art cited therein,
dress as provided for in § 1.33(c). The with or without consideration of other
name and address of the party served patents or printed publications. A
must be indicated. If service was not statement and any accompanying in-
possible, a duplicate copy must be sup- formation submitted pursuant to
plied to the Office. § 1.501(a)(2) will not be considered by
(6) A certification by the third party the examiner when making a deter-
requester that the statutory estoppel mination on the request. The exam-
provisions of 35 U.S.C. 315(e)(1) or 35 iner’s determination will be based on
U.S.C. 325(e)(1) do not prohibit the re- the claims in effect at the time of the
quester from filing the ex parte reexam- determination, will become a part of
ination request. the official file of the patent, and will
(c) If the request does not include the be given or mailed to the patent owner
fee for requesting ex parte reexamina- at the address provided for in § 1.33(c)
tion required by paragraph (a) of this and to the person requesting reexam-
section and meet all the requirements ination.
by paragraph (b) of this section, then (b) Where no substantial new ques-
the person identified as requesting re- tion of patentability has been found, a
examination will be so notified and refund of a portion of the fee for re-
will generally be given an opportunity questing ex parte reexamination will be
to complete the request within a speci- made to the requester in accordance

fied time. Failure to comply with the with § 1.26(c).
153
§ 1.520 37 CFR Ch. I (7–1–16 Edition)
(c) The requester may seek review by sidered to be constructive notice and ex
a petition to the Director under § 1.181 parte reexamination will proceed.
within one month of the mailing date
[65 FR 76775, Dec. 7, 2000]
of the examiner’s determination refus-
ing ex parte reexamination. Any such § 1.530 Statement by patent owner in
petition must comply with § 1.181(b). If ex parte reexamination; amendment
no petition is timely filed or if the de- by patent owner in ex parte or inter
cision on petition affirms that no sub- partes reexamination; inventorship
stantial new question of patentability change in ex parte or inter partes
has been raised, the determination reexamination.
shall be final and nonappealable. (a) Except as provided in § 1.510(e), no
[65 FR 76775, Dec. 7, 2000, as amended at 77 statement or other response by the
FR 46626, Aug. 6, 2012] patent owner in an ex parte reexamina-
tion proceeding shall be filed prior to
§ 1.520 Ex parte reexamination at the the determinations made in accordance
initiative of the Director. with § 1.515 or § 1.520. If a premature
The Director, at any time during the statement or other response is filed by
period of enforceability of a patent, the patent owner, it will not be ac-
may determine whether or not a sub- knowledged or considered in making
stantial new question of patentability the determination, and it will be re-
is raised by patents or printed publica- turned or discarded (at the Office’s op-
tions which have been discovered by tion).
the Director or which have been (b) The order for ex parte reexamina-
brought to the Director’s attention, tion will set a period of not less than
even though no request for reexamina- two months from the date of the order
tion has been filed in accordance with within which the patent owner may file
§ 1.510 or § 1.913. The Director may ini- a statement on the new question of
tiate ex parte reexamination without a patentability, including any proposed
request for reexamination pursuant to amendments the patent owner wishes
§ 1.510 or § 1.913. Normally requests from to make.
outside the Office that the Director un- (c) Any statement filed by the patent
dertake reexamination on his own ini- owner shall clearly point out why the
tiative will not be considered. Any de- subject matter as claimed is not antici-
termination to initiate ex parte reex- pated or rendered obvious by the prior
amination under this section will be- art patents or printed publications, ei-
come a part of the official file of the ther alone or in any reasonable com-
patent and will be mailed to the patent binations. Where the reexamination re-
owner at the address as provided for in quest was filed by a third party re-
§ 1.33(c). quester, any statement filed by the
[65 FR 76775, Dec. 7, 2000] patent owner must be served upon the
ex parte reexamination requester in ac-
Ex Parte REEXAMINATION cordance with § 1.248.
(d) Making amendments in a reexam-
§ 1.525 Order for ex parte reexamina- ination proceeding. A proposed amend-
tion. ment in an ex parte or an inter partes re-
(a) If a substantial new question of examination proceeding is made by fil-
patentability is found pursuant to ing a paper directing that proposed
§ 1.515 or § 1.520, the determination will specified changes be made to the pat-
include an order for ex parte reexamina- ent specification, including the claims,
tion of the patent for resolution of the or to the drawings. An amendment
question. If the order for ex parte reex- paper directing that proposed specified
amination resulted from a petition pur- changes be made in a reexamination
suant to § 1.515(c), the ex parte reexam- proceeding may be submitted as an ac-
ination will ordinarily be conducted by companiment to a request filed by the
an examiner other than the examiner patent owner in accordance with
responsible for the initial determina- § 1.510(e), as part of a patent owner
tion under § 1.515(a). statement in accordance with para-
(b) The notice published in the Offi- graph (b) of this section, or, where per-
cial Gazette under § 1.11(c) will be con- mitted, during the prosecution of the
154
reexamination proceeding pursuant to rate from the pages containing the

§ 1.550(a) or § 1.937. changes, the status (i.e., pending or
(1) Specification other than the claims. canceled), as of the date of the amend-
Changes to the specification, other ment, of all patent claims and of all
than to the claims, must be made by added claims, and an explanation of the
submission of the entire text of an support in the disclosure of the patent
added or rewritten paragraph including for the changes to the claims made by
markings pursuant to paragraph (f) of the amendment paper.
this section, except that an entire (f) Changes shown by markings. Any
paragraph may be deleted by a state- changes relative to the patent being re-
ment deleting the paragraph, without examined which are made to the speci-
presentation of the text of the para- fication, including the claims, must in-
graph. The precise point in the speci- clude the following markings:
fication must be identified where any (1) The matter to be omitted by the
added or rewritten paragraph is lo- reexamination proceeding must be en-
cated. This paragraph applies whether closed in brackets; and
the amendment is submitted on paper (2) The matter to be added by the re-
or compact disc (see §§ 1.96 and 1.825). examination proceeding must be under-
(2) Claims. An amendment paper must lined.
include the entire text of each patent (g) Numbering of patent claims pre-
claim which is being proposed to be served. Patent claims may not be re-
changed by such amendment paper and numbered. The numbering of any
of each new claim being proposed to be claims added in the reexamination pro-
added by such amendment paper. For ceeding must follow the number of the
any claim changed by the amendment highest numbered patent claim.
paper, a parenthetical expression (h) Amendment of disclosure may be re-
‘‘amended,’’ ‘‘twice amended,’’ etc., quired. The disclosure must be amend-
should follow the claim number. Each ed, when required by the Office, to cor-
patent claim proposed to be changed rect inaccuracies of description and
and each proposed added claim must definition, and to secure substantial
include markings pursuant to para- correspondence between the claims,
graph (f) of this section, except that a the remainder of the specification, and
patent claim or proposed added claim the drawings.
should be canceled by a statement can- (i) Amendments made relative to patent.
celing the claim, without presentation All amendments must be made relative
of the text of the claim. to the patent specification, including
(3) Drawings. Any change to the pat- the claims, and drawings, which are in
ent drawings must be submitted as a effect as of the date of filing the re-
sketch on a separate paper showing the quest for reexamination.
proposed changes in red for approval by (j) No enlargement of claim scope. No
the examiner. Upon approval of the amendment may enlarge the scope of
changes by the examiner, only new the claims of the patent or introduce
sheets of drawings including the new matter. No amendment may be
changes and in compliance with § 1.84 proposed for entry in an expired pat-
must be filed. Amended figures must be ent. Moreover, no amendment, other
identified as ‘‘Amended,’’ and any than the cancellation of claims, will be
added figure must be identified as incorporated into the patent by a cer-
‘‘New.’’ In the event a figure is can- tificate issued after the expiration of
celed, the figure must be surrounded by the patent.
brackets and identified as ‘‘Canceled.’’ (k) Amendments not effective until cer-
(4) The formal requirements for pa- tificate. Although the Office actions
pers making up the reexamination pro- will treat proposed amendments as
ceeding other than those set forth in though they have been entered, the
this section are set out in § 1.52. proposed amendments will not be effec-
(e) Status of claims and support for tive until the reexamination certifi-
claim changes. Whenever there is an cate is issued and published.
amendment to the claims pursuant to (l) Correction of inventorship in an ex
paragraph (d) of this section, there parte or inter partes reexamination pro-
must also be supplied, on pages sepa- ceeding. (1) When it appears in a patent
155
§ 1.535 37 CFR Ch. I (7–1–16 Edition)
being reexamined that the correct in- will be considered prior to examina-
ventor or inventors were not named, tion.
the Director may, on petition of all the [65 FR 76776, Dec. 7, 2000]
parties set forth in § 1.324(b)(1) and
(b)(2), including the assignees, and sat- § 1.550 Conduct of ex parte reexamina-
isfactory proof of the facts and pay- tion proceedings.
ment of the fee set forth in § 1.20(b), or (a) All ex parte reexamination pro-
on order of a court before which such ceedings, including any appeals to the
matter is called in question, include in Board of Patent Appeals and Inter-
the reexamination certificate to be ferences, will be conducted with special
issued under § 1.570 or § 1.997 an amend- dispatch within the Office. After
ment naming only the actual inventor issuance of the ex parte reexamination
or inventors. The petition must be sub- order and expiration of the time for
mitted as part of the reexamination submitting any responses, the exam-
proceeding and must satisfy the re- ination will be conducted in accord-
quirements of § 1.324. ance with §§ 1.104 through 1.116 and will
(2) Notwithstanding paragraph (l)(1) result in the issuance of an ex parte re-
of this section, if a petition to correct examination certificate under § 1.570.
inventorship satisfying the require- (b) The patent owner in an ex parte
ments of § 1.324 is filed in a reexamina- reexamination proceeding will be given
tion proceeding, and the reexamination at least thirty days to respond to any
proceeding is concluded other than by Office action. In response to any rejec-
a reexamination certificate under tion, such response may include fur-
§ 1.570 or § 1.997, a certificate of correc- ther statements and/or proposed
amendments or new claims to place the
tion indicating the change of
patent in a condition where all claims,
inventorship stated in the petition will
if amended as proposed, would be pat-
be issued upon request by the patentee.
entable.
[46 FR 29185, May 29, 1981, as amended at 62 (c) The time for taking any action by
FR 53200, Oct. 10, 1997; 65 FR 54678, Sept. 8, a patent owner in an ex parte reexam-
2000; 65 FR 76775, Dec. 7, 2000; 72 FR 18905, ination proceeding may be extended as
Apr. 16, 2007; 77 FR 48825, Aug. 14, 2012] provided in this paragraph.
(1) Any request for such an extension
§ 1.535 Reply by third party requester must specify the requested period of
in ex parte reexamination. extension and be accompanied by the
A reply to the patent owner’s state- petition fee set forth in § 1.17(g).
ment under § 1.530 may be filed by the (2) Any request for an extension in a
ex parte reexamination requester with- third party requested ex parte reexam-
in two months from the date of service ination must be filed on or before the
of the patent owner’s statement. Any day on which action by the patent
reply by the ex parte requester must be owner is due, and the mere filing of
served upon the patent owner in ac- such a request for extension will not ef-
cordance with § 1.248. If the patent fect the extension. A request for an ex-
owner does not file a statement under tension in a third party requested ex
§ 1.530, no reply or other submission parte reexamination will not be granted
from the ex parte reexamination rein the absence of sufficient cause or for
quester will be considered. more than a reasonable time.
(3) Any request for an extension in a
[65 FR 76776, Dec. 7, 2000] patent owner requested or Director or-
dered ex parte reexamination for up to
§ 1.540 Consideration of responses in two months from the time period set in
ex parte reexamination.
the Office action must be filed no later
The failure to timely file or serve the than two months from the expiration
documents set forth in § 1.530 or in of the time period set in the Office ac-
§ 1.535 may result in their being refused tion. A request for an extension in a
consideration. No submissions other patent owner requested or Director or-
than the statement pursuant to § 1.530 dered ex parte reexamination for more
and the reply by the ex parte reexam- than two months from the time period
ination requester pursuant to § 1.535 set in the Office action must be filed on
156
or before the day on which action by reexamination requester will be ac-

the patent owner is due, and the mere knowledged or considered. Further, no
filing of a request for an extension for submissions on behalf of any third par-
more than two months from the time ties will be acknowledged or considered
period set in the Office action will not unless such submissions are:
effect the extension. The time for tak- (1) in accordance with § 1.510 or § 1.535;
ing action in a patent owner requested or
or Director ordered ex parte reexamina- (2) entered in the patent file prior to
tion will not be extended for more than the date of the order for ex parte reex-
two months from the time period set in amination pursuant to § 1.525.
the Office action in the absence of suf- (h) Submissions by third parties,
ficient cause or for more than a reason- filed after the date of the order for ex
able time. parte reexamination pursuant to § 1.525,
(4) The reply or other action must in must meet the requirements of and will
any event be filed prior to the expira- be treated in accordance with § 1.501(a).
tion of the period of extension, but in (i) A petition in an ex parte reexam-
no situation may a reply or other ac- ination proceeding must be accom-
tion be filed later than the maximum panied by the fee set forth in
time period set by statute. § 1.20(c)(6), except for petitions under
(5) See § 90.3(c) of this title for exten- paragraph (c) of this section to extend
sions of time for filing a notice of ap- the period for response by a patent
peal to the U.S. Court of Appeals for owner, petitions under paragraph (e) of
the Federal Circuit or for commencing this section to accept a delayed re-
a civil action. sponse by a patent owner, petitions
(d) If the patent owner fails to file a under § 1.78 to accept an unintention-
timely and appropriate response to any ally delayed benefit claim, and peti-
Office action or any written statement tions under § 1.530(l) for correction of
of an interview required under inventorship in a reexamination pro-
§ 1.560(b), the prosecution in the ex ceeding.
parte reexamination proceeding will be
a terminated prosecution, and the Di- [65 FR 76776, Dec. 7, 2000, as amended at 69
rector will proceed to issue and publish FR 56545, Sept. 21, 2004; 72 FR 18905, Apr. 16,
a certificate concluding the reexamina- 2007; 77 FR 48851, Aug. 14, 2012; 78 FR 62407,
tion proceeding under § 1.570 in accord- Oct. 21, 2013]
ance with the last action of the Office.
§ 1.552 Scope of reexamination in ex
(e) If a response by the patent owner parte reexamination proceedings.
is not timely filed in the Office, a peti-
tion may be filed pursuant to § 1.137 to (a) Claims in an ex parte reexamina-
revive a reexamination prosecution tion proceeding will be examined on
terminated under paragraph (d) of this the basis of patents or printed publica-
section if the delay in response was un- tions and, with respect to subject mat-
intentional. ter added or deleted in the reexamina-
(f) The reexamination requester will tion proceeding, on the basis of the re-
be sent copies of Office actions issued quirements of 35 U.S.C. 112.
during the ex parte reexamination pro- (b) Claims in an ex parte reexamina-
ceeding. After filing of a request for ex tion proceeding will not be permitted
parte reexamination by a third party to enlarge the scope of the claims of
requester, any document filed by either the patent.
the patent owner or the third party re- (c) Issues other than those indicated
quester must be served on the other in paragraphs (a) and (b) of this section
party in the reexamination proceeding will not be resolved in a reexamination
in the manner provided by § 1.248. The proceeding. If such issues are raised by
document must reflect service or the the patent owner or third party re-
document may be refused consideration quester during a reexamination pro-
by the Office. ceeding, the existence of such issues
(g) The active participation of the ex will be noted by the examiner in the
parte reexamination requester ends next Office action, in which case the
with the reply pursuant to § 1.535, and patent owner may consider the advis-
no further submissions on behalf of the ability of filing a reissue application to
157
§ 1.555 37 CFR Ch. I (7–1–16 Edition)
have such issues considered and re- isfied if all information known to be
solved. material to patentability of any claim
(d) Any statement of the patent in the patent after issuance of the reex-
owner and any accompanying informa- amination certificate was cited by the
tion submitted pursuant to § 1.501(a)(2) Office or submitted to the Office in an
which is of record in the patent being information disclosure statement.
reexamined (which includes any reex- However, the duties of candor, good
amination files for the patent) may be faith, and disclosure have not been
used after a reexamination proceeding complied with if any fraud on the Of-
has been ordered to determine the fice was practiced or attempted or the
proper meaning of a patent claim when duty of disclosure was violated through
applying patents or printed publica- bad faith or intentional misconduct by,
tions. or on behalf of, the patent owner in the
reexamination proceeding. Any infor-
FR 46627, Aug. 6, 2012] mation disclosure statement must be
filed with the items listed in § 1.98(a) as
§ 1.555 Information material to patent- applied to individuals associated with
ability in ex parte reexamination the patent owner in a reexamination
and inter partes reexamination pro- proceeding, and should be filed within
ceedings. two months of the date of the order for
(a) A patent by its very nature is af- reexamination, or as soon thereafter as
fected with a public interest. The pub- possible.
lic interest is best served, and the most (b) Under this section, information is
effective reexamination occurs when, material to patentability in a reexam-
at the time a reexamination pro- ination proceeding when it is not cu-
ceeding is being conducted, the Office mulative to information of record or
is aware of and evaluates the teachings being made of record in the reexamina-
of all information material to patent- tion proceeding, and
ability in a reexamination proceeding. (1) It is a patent or printed publica-
Each individual associated with the tion that establishes, by itself or in
patent owner in a reexamination pro- combination with other patents or
ceeding has a duty of candor and good printed publications, a prima facie case
faith in dealing with the Office, which of unpatentability of a claim; or
includes a duty to disclose to the Office (2) It refutes, or is inconsistent with,
all information known to that indi- a position the patent owner takes in:
vidual to be material to patentability (i) Opposing an argument of
in a reexamination proceeding. The in- unpatentability relied on by the Office,
dividuals who have a duty to disclose or
to the Office all information known to (ii) Asserting an argument of patent-
them to be material to patentability in ability.
a reexamination proceeding are the A prima facie case of unpatentability
patent owner, each attorney or agent of a claim pending in a reexamination
who represents the patent owner, and proceeding is established when the in-
every other individual who is sub- formation compels a conclusion that a
stantively involved on behalf of the claim is unpatentable under the pre-
patent owner in a reexamination pro- ponderance of evidence, burden-of-
ceeding. The duty to disclose the infor- proof standard, giving each term in the
mation exists with respect to each claim its broadest reasonable construc-
claim pending in the reexamination tion consistent with the specification,
proceeding until the claim is cancelled. and before any consideration is given
Information material to the patent- to evidence which may be submitted in
ability of a cancelled claim need not be an attempt to establish a contrary con-
submitted if the information is not ma- clusion of patentability.
terial to patentability of any claim re- (c) The responsibility for compliance
maining under consideration in the re- with this section rests upon the indi-
examination proceeding. The duty to viduals designated in paragraph (a) of
disclose all information known to be this section and no evaluation will be
material to patentability in a reexam- made by the Office in the reexamina-

ination proceeding is deemed to be sat- tion proceeding as to compliance with
158
this section. If questions of compliance such as interferences, reissues, ex parte

with this section are raised by the pat- reexaminations, inter partes reexamina-
ent owner or the third party requester tions, or litigation and the results of
during a reexamination proceeding, such proceedings. See § 1.985 for notifi-
they will be noted as unresolved ques- cation of prior or concurrent pro-
tions in accordance with § 1.552(c). ceedings in an inter partes reexamina-
[57 FR 2036, Jan. 17, 1992, as amended at 65 tion proceeding.
FR 76776, Dec. 7, 2000] (b) If a patent in the process of ex
parte reexamination is or becomes in-
§ 1.560 Interviews in ex parte reexam- volved in litigation, the Director shall
ination proceedings. determine whether or not to suspend
(a) Interviews in ex parte reexamina- the reexamination. See § 1.987 for inter
tion proceedings pending before the Of- partes reexamination proceedings.
fice between examiners and the owners (c) If ex parte reexamination is or-
of such patents or their attorneys or dered while a prior ex parte reexamina-
agents of record must be conducted in tion proceeding is pending and prosecu-
the Office at such times, within Office tion in the prior ex parte reexamination
hours, as the respective examiners may proceeding has not been terminated,
designate. Interviews will not be per- the ex parte reexamination proceedings
mitted at any other time or place with- will usually be merged and result in
out the authority of the Director. the issuance and publication of a single
Interviews for the discussion of the certificate under § 1.570. For merger of
patentability of claims in patents in- inter partes reexamination proceedings,
volved in ex parte reexamination pro- see § 1.989(a). For merger of ex parte re-
ceedings will not be conducted prior to examination and inter partes reexam-
the first official action. Interviews
ination proceedings, see § 1.989(b).
should be arranged in advance. Re-
quests that reexamination requesters (d) If a reissue application and an ex
participate in interviews with exam- parte reexamination proceeding on
iners will not be granted. which an order pursuant to § 1.525 has
(b) In every instance of an interview been mailed are pending concurrently
with an examiner in an ex parte reex- on a patent, a decision will usually be
amination proceeding, a complete writ- made to merge the two proceedings or
ten statement of the reasons presented to suspend one of the two proceedings.
at the interview as warranting favor- Where merger of a reissue application
able action must be filed by the patent and an ex parte reexamination pro-
owner. An interview does not remove ceeding is ordered, the merged exam-
the necessity for response to Office ac- ination will be conducted in accord-
tions as specified in § 1.111. Patent own- ance with §§ 1.171 through 1.179, and the
er’s response to an outstanding Office patent owner will be required to place
action after the interview does not re- and maintain the same claims in the
move the necessity for filing the writ- reissue application and the ex parte re-
ten statement. The written statement examination proceeding during the
must be filed as a separate part of a re- pendency of the merged proceeding.
sponse to an Office action outstanding The examiner’s actions and responses
at the time of the interview, or as a by the patent owner in a merged pro-
separate paper within one month from ceeding will apply to both the reissue
the date of the interview, whichever is application and the ex parte reexamina-
later. tion proceeding and will be physically
[65 FR 76777, Dec. 7, 2000] entered into both files. Any ex parte re-
examination proceeding merged with a
§ 1.565 Concurrent office proceedings reissue application shall be concluded
which include an ex parte reexam- by the grant of the reissued patent. For
ination proceeding. merger of a reissue application and an
(a) In an ex parte reexamination pro- inter partes reexamination, see § 1.991.
ceeding before the Office, the patent (e) If a patent in the process of ex
owner must inform the Office of any parte reexamination is or becomes in-
prior or concurrent proceedings in volved in an interference, the Director

which the patent is or was involved may suspend the reexamination or the
159
§ 1.570 37 CFR Ch. I (7–1–16 Edition)
interference. The Director will not con- ex parte reexamination certificate re-
sider a request to suspend an inter- quired by this section and 35 U.S.C. 307.
ference unless a motion (§ 41.121(a)(3) of (f) A notice of the issuance of each ex
this title) to suspend the interference parte reexamination certificate under
has been presented to, and denied by, this section will be published in the Of-
an administrative patent judge, and ficial Gazette on its date of issuance.
the request is filed within ten (10) days
of a decision by an administrative pat- [65 FR 76777, Dec. 7, 2000, as amended at 72
ent judge denying the motion for sus- FR 18905, Apr. 16, 2007]
pension or such other time as the ad-
ministrative patent judge may set. For Subpart E—Supplemental
concurrent inter partes reexamination Examination of Patents
and interference of a patent, see § 1.993.
[65 FR 76776, Dec. 7, 2000, as amended at 69 SOURCE: 77 FR 48851, Aug. 14, 2012, unless
FR 50001, Aug. 12, 2004; 72 FR 18905, Apr. 16, otherwise noted.
2007]
§ 1.601 Filing of papers in supple-
Ex Parte REEXAMINATION CERTIFICATE mental examination.
§ 1.570 Issuance and publication of ex (a) A request for supplemental exam-
parte reexamination certificate con- ination of a patent must be filed by the
cludes ex parte reexamination pro- owner(s) of the entire right, title, and
ceeding. interest in the patent.
(a) To conclude an ex parte reexam- (b) Any party other than the patent
ination proceeding, the Director will owner (i.e., any third party) is prohib-
issue and publish an ex parte reexam- ited from filing papers or otherwise
ination certificate in accordance with participating in any manner in a sup-
35 U.S.C. 307 setting forth the results of plemental examination proceeding.
the ex parte reexamination proceeding (c) A request for supplemental exam-
and the content of the patent following ination of a patent may be filed at any
the ex parte reexamination proceeding. time during the period of enforce-
(b) An ex parte reexamination certifi- ability of the patent.
cate will be issued and published in
each patent in which an ex parte reex- § 1.605 Items of information.
amination proceeding has been ordered (a) Each request for supplemental ex-
under § 1.525 and has not been merged amination may include no more than
with any inter partes reexamination
twelve items of information believed to
proceeding pursuant to § 1.989(a). Any
be relevant to the patent. More than
statutory disclaimer filed by the pat-
one request for supplemental examina-
ent owner will be made part of the ex
tion of the same patent may be filed at
parte reexamination certificate.
any time during the period of enforce-
(c) The ex parte reexamination cer-
ability of the patent.
tificate will be mailed on the day of its
date to the patent owner at the address (b) An item of information includes a
as provided for in § 1.33(c). A copy of document submitted as part of the re-
the ex parte reexamination certificate quest that contains information, be-
will also be mailed to the requester of lieved to be relevant to the patent,
the ex parte reexamination proceeding. that the patent owner requests the Of-
(d) If an ex parte reexamination cer- fice to consider, reconsider, or correct.
tificate has been issued and published If the information to be considered, re-
which cancels all of the claims of the considered, or corrected is not, at least
patent, no further Office proceedings in part, contained within or based on
will be conducted with that patent or any document submitted as part of the
any reissue applications or any reex- request, the discussion within the body
amination requests relating thereto. of the request relative to the informa-
(e) If the ex parte reexamination pro- tion will be considered as an item of in-
ceeding is terminated by the grant of a formation.
reissued patent as provided in § 1.565(d), (c) An item of information must be in

the reissued patent will constitute the writing in accordance with § 1.2. To be
160
considered, any audio or video record- (7) A copy of each item of informa-
ing must be submitted in the form of a tion listed in paragraph (b)(2) of this
written transcript. section, accompanied by a written
(d) If one item of information is com- English translation of all of the nec-
bined in the request with one or more essary and pertinent parts of any non-
additional items of information, each English language item of information.
item of information of the combination The patent owner is not required to
may be separately counted. Exceptions submit copies of items of information
include the combination of a non- that form part of the discussion within
English language document and its the body of the request as specified in
translation, and the combination of a § 1.605(b), or copies of U.S. patents and
document that is over 50 pages in U.S. patent application publications.
length and its summary pursuant to (8) A summary of the relevant por-
§ 1.610(b)(8). tions of any submitted document,
other than the request, that is over 50
§ 1.610 Content of request for supple- pages in length. The summary must in-
mental examination. clude citations to the particular pages
(a) A request for supplemental exam- containing the relevant portions.
ination must be accompanied by the (9) An identification of the owner(s)
fee for filing a request for supple- of the entire right, title, and interest
mental examination as set forth in in the patent requested to be examined,
§ 1.20(k)(1), the fee for reexamination and a submission by the patent owner
ordered as a result of a supplemental in compliance with § 3.73(c) of this
examination proceeding as set forth in chapter establishing the entirety of the
§ 1.20(k)(2), and any applicable docu- ownership in the patent requested to be
ment size fees as set forth in examined.
§ 1.20(k)(3). (c) The request may also include:
(b) A request for supplemental exam- (1) A cover sheet itemizing each com-
ination must include: ponent submitted as part of the re-
(1) An identification of the number of quest;
the patent for which supplemental ex- (2) A table of contents for the re-
amination is requested. quest;
(2) A list of the items of information (3) An explanation of how the claims
that are requested to be considered, re- patentably distinguish over the items
considered, or corrected. Where appro- of information; and
priate, the list must meet the require- (4) An explanation of why each item
ments of § 1.98(b). of information submitted with the re-
(3) A list identifying any other prior quest does or does not raise a substan-
or concurrent post-patent Office pro- tial new question of patentability.
ceedings involving the patent for which (d) The filing date of a request for
supplemental examination is being re- supplemental examination will not be
quested, including an identification of granted if the request is not in compli-
the type of proceeding, the identifying ance with §§ 1.605, 1.615, and this sec-
number of any such proceeding (e.g., a tion, subject to the discretion of the
control number or reissue application Office. If the Office determines that the
number), and the filing date of any request, as originally submitted, is not
such proceeding. entitled to a filing date, the patent
(4) An identification of each claim of owner will be so notified and will be
the patent for which supplemental ex- given an opportunity to complete the
amination is requested. request within a specified time. If the
(5) A separate, detailed explanation patent owner does not timely comply
of the relevance and manner of apply- with the notice, the request for supple-
ing each item of information to each mental examination will not be grant-
claim of the patent for which supple- ed a filing date and the fee for reexam-
mental examination is requested. ination as set forth in § 1.20(k)(2) will
(6) A copy of the patent for which be refunded. If the patent owner timely
supplemental examination is requested files a corrected request in response to
and a copy of any disclaimer or certifi- the notice that properly addresses all
cate issued for the patent. of the defects set forth in the notice
161
§ 1.615 37 CFR Ch. I (7–1–16 Edition)
and that otherwise complies with all of (d) The patent owner must, as soon as
the requirements of §§ 1.605, 1.615, and possible upon the discovery of any
this section, the filing date of the sup- other prior or concurrent post-patent
plemental examination request will be Office proceeding involving the patent
the receipt date of the corrected re- for which the current supplemental ex-
quest. amination is requested, file a paper
limited to notifying the Office of the
§ 1.615 Format of papers filed in a sup- post- patent Office proceeding, if such
plemental examination proceeding. notice has not been previously provided
(a) All papers submitted in a supple- with the request. The notice shall be
mental examination proceeding must limited to an identification of the post-
be formatted in accordance with § 1.52. patent Office proceeding, including the
(b) Court documents and non-patent type of proceeding, the identifying
literature may be redacted, but must number of any such proceeding (e.g., a
otherwise be identical both in content control number or reissue application
and in format to the original docu- number), and the filing date of any
ments, and, if a court document, to the such proceeding, without any discus-
document submitted in court, and sion of the issues of the current supple-
must not otherwise be reduced in size mental examination proceeding or of
or modified, particularly in terms of the identified post-patent Office pro-
font type, font size, line spacing, and ceeding(s).
margins. Patents, patent application (e) Interviews are prohibited in a sup-
publications, and third-party-generated plemental examination proceeding.
affidavits or declarations must not be (f) No amendment may be filed in a
reduced in size or otherwise modified supplemental examination proceeding.
in the manner described in this para- (g) If the Office becomes aware, dur-
graph. ing the course of supplemental exam-
ination or of any reexamination or-
§ 1.620 Conduct of supplemental exam- dered under 35 U.S.C. 257 as a result of
ination proceeding.
the supplemental examination pro-
(a) Within three months after the fil- ceeding, that a material fraud on the
ing date of a request for supplemental Office may have been committed in
examination, the Office will determine connection with the patent requested
whether a substantial new question of to be examined, the supplemental ex-
patentability affecting any claim of amination proceeding or any reexam-
the patent is raised by any of the items ination proceeding ordered under 35
of information presented in the re- U.S.C. 257 will continue, and the mat-
quest. The determination will gen- ter will be referred to the U.S. Attor-
erally be limited to a review of the ney General in accordance with 35
item(s) of information identified in the U.S.C. 257(e).
request as applied to the identified
claim(s) of the patent. The determina- § 1.625 Conclusion of supplemental ex-
tion will be based on the claims in ef- amination; publication of supple-
fect at the time of the determination mental examination certificate; pro-
and will become a part of the official cedure after conclusion.
record of the patent. (a) A supplemental examination pro-
(b) The Office may hold in abeyance ceeding will conclude with the elec-
action on any petition or other paper tronic issuance of a supplemental ex-
filed in a supplemental examination amination certificate. The supple-
proceeding until after the proceeding is mental examination certificate will in-
concluded by the electronic issuance of dicate the result of the determination
the supplemental examination certifi- whether any of the items of informa-
cate as set forth in § 1.625. tion presented in the request raised a
(c) If an unauthorized or otherwise substantial new question of patent-
improper paper is filed in a supple- ability.
mental examination proceeding, it will (b) If the supplemental examination
not be entered into the official file or certificate states that a substantial
considered, or if inadvertently entered, new question of patentability is raised

it will be expunged. by one or more items of information in
162
the request, ex parte reexamination of SOURCE: 52 FR 9394, Mar. 24, 1987, unless
the patent will be ordered under 35 otherwise noted.
U.S.C. 257. Upon the conclusion of the
ADJUSTMENT OF PATENT TERM DUE TO
ex parte reexamination proceeding, an
EXAMINATION DELAY
ex parte reexamination certificate,
which will include a statement speci- § 1.701 Extension of patent term due to
fying that ex parte reexamination was examination delay under the Uru-
ordered under 35 U.S.C. 257, will be pub- guay Round Agreements Act (origi-
lished. The electronically issued sup- nal applications, other than de-
plemental examination certificate will signs, filed on or after June 8, 1995,
and before May 29, 2000).
remain as part of the public record of
the patent. (a) A patent, other than for designs,
(c) If the supplemental examination issued on an application filed on or
certificate indicates that no substan- after June 8, 1995, is entitled to exten-
tial new question of patentability is sion of the patent term if the issuance
raised by any of the items of informa- of the patent was delayed due to:
tion in the request, and ex parte reex- (1) Interference or derivation pro-
amination is not ordered under 35 ceedings under 35 U.S.C. 135(a); and/or
(2) The application being placed
U.S.C. 257, the electronically issued
under a secrecy order under 35 U.S.C.
supplemental examination certificate
181; and/or
will be published in due course. The fee
(3) Appellate review by the Patent
for reexamination ordered as a result
Trial and Appeal Board or by a Federal
of supplemental examination, as set
court under 35 U.S.C. 141 or 145, if the
forth in § 1.20(k)(2), will be refunded in
patent was issued pursuant to a deci-
accordance with § 1.26(c). sion in the review reversing an adverse
(d) Any ex parte reexamination or- determination of patentability and if
dered under 35 U.S.C. 257 will be con- the patent is not subject to a terminal
ducted in accordance with §§ 1.530 disclaimer due to the issuance of an-
through 1.570, which govern ex parte re- other patent claiming subject matter
examination, except that: that is not patentably distinct from
(1) The patent owner will not have that under appellate review. If an ap-
the right to file a statement pursuant plication is remanded by a panel of the
to § 1.530, and the order will not set a Patent Trial and Appeal Board and the
time period within which to file such a remand is the last action by a panel of
statement; the Patent Trial and Appeal Board
(2) Reexamination of any claim of the prior to the mailing of a notice of al-
patent may be conducted on the basis lowance under 35 U.S.C. 151 in the ap-
of any item of information as set forth plication, the remand shall be consid-
in § 1.605, and is not limited to patents ered a decision in the review reversing
and printed publications or to subject an adverse determination of patent-
matter that has been added or deleted ability as that phrase is used in 35
during the reexamination proceeding, U.S.C. 154(b)(2) as amended by section
notwithstanding § 1.552(a); 532(a) of the Uruguay Round Agree-
(3) Issues in addition to those raised ments Act, Public Law 103–465, 108
by patents and printed publications, Stat. 4809, 4983–85 (1994), and a final de-
and by subject matter added or deleted cision in favor of the applicant under
during a reexamination proceeding, paragraph (c)(3) of this section. A re-
may be considered and resolved, not- mand by a panel of the Patent Trial
withstanding § 1.552(c); and and Appeal Board shall not be consid-
(4) Information material to patent- ered a decision in the review reversing
ability will be defined by § 1.56(b), not- an adverse determination of patent-
withstanding § 1.555(b). ability as provided in this paragraph if
there is filed a request for continued
examination under 35 U.S.C. 132(b) that
Subpart F—Adjustment and was not first preceded by the mailing,
Extension of Patent Term after such remand, of at least one of an
action under 35 U.S.C. 132 or a notice of

AUTHORITY: 35 U.S.C. 2(b)(2), 154, and 156. allowance under 35 U.S.C. 151.
163
§ 1.702 37 CFR Ch. I (7–1–16 Edition)
(b) The term of a patent entitled to (iv) The number of days, if any, in
extension under paragraph (a) of this the period beginning on the date of no-
section shall be extended for the sum of tification under § 5.3(c) and ending on
the periods of delay calculated under the date of mailing of the notice of al-
paragraphs (c)(1), (c)(2), (c)(3) and (d) of lowance under § 1.311.
this section, to the extent that these (3) The period of delay under para-
periods are not overlapping, up to a graph (a)(3) of this section is the sum
maximum of five years. The extension of the number of days, if any, in the pe-
will run from the expiration date of the riod beginning on the date on which an
patent. appeal to the Patent Trial and Appeal
(c)(1) The period of delay under para- Board was filed under 35 U.S.C. 134 and
graph (a)(1) of this section for an appli- ending on the date of a final decision in
cation is the sum of the following peri- favor of the applicant by the Patent
ods, to the extent that the periods are Trial and Appeal Board or by a Federal
not overlapping: court in an appeal under 35 U.S.C. 141
(i) With respect to each interference or a civil action under 35 U.S.C. 145.
or derivation proceeding in which the (d) The period of delay set forth in
application was involved, the number paragraph (c)(3) shall be reduced by:
of days, if any, in the period beginning (1) Any time during the period of ap-
on the date the interference or deriva- pellate review that occurred before
tion proceeding was instituted to in- three years from the filing date of the
volve the application in the inter- first national application for patent
ference or derivation proceeding and presented for examination; and
ending on the date that the inter- (2) Any time during the period of ap-
ference or derivation proceeding was pellate review, as determined by the
terminated with respect to the applica- Director, during which the applicant
tion; and for patent did not act with due dili-
(ii) The number of days, if any, in the gence. In determining the due diligence
period beginning on the date prosecu- of an applicant, the Director may ex-
tion in the application was suspended amine the facts and circumstances of
by the Patent and Trademark Office the applicant’s actions during the pe-
due to interference or derivation pro- riod of appellate review to determine
ceedings under 35 U.S.C. 135(a) not in- whether the applicant exhibited that
volving the application and ending on degree of timeliness as may reasonably
the date of the termination of the sus- be expected from, and which is ordi-
pension. narily exercised by, a person during a
period of appellate review.
(2) The period of delay under para-
(e) The provisions of this section
graph (a)(2) of this section for an appli-
apply only to original patents, except
cation is the sum of the following peri-
for design patents, issued on applica-
ods, to the extent that the periods are
tions filed on or after June 8, 1995, and
not overlapping:
before May 29, 2000.
(i) The number of days, if any, the
application was maintained in a sealed [60 FR 20228, Apr. 25, 1995, as amended at 65
condition under 35 U.S.C. 181; FR 56391, Sept. 18, 2000; 69 FR 21710, Apr. 22,
(ii) The number of days, if any, in the 2004; 69 FR 50001, Aug. 12, 2004; 77 FR 46627,
Aug. 6, 2012]
period beginning on the date of mailing
of an examiner’s answer under § 41.39 of § 1.702 Grounds for adjustment of pat-
this title in the application under se- ent term due to examination delay
crecy order and ending on the date the under the Patent Term Guarantee
secrecy order and any renewal thereof Act of 1999 (original applications,
was removed; other than designs, filed on or after
(iii) The number of days, if any, in May 29, 2000).
the period beginning on the date appli- (a) Failure to take certain actions with-
cant was notified that an interference in specified time frames. Subject to the
or derivation proceeding would be in- provisions of 35 U.S.C. 154(b) and this
stituted but for the secrecy order and subpart, the term of an original patent
ending on the date the secrecy order shall be adjusted if the issuance of the
and any renewal thereof was removed; patent was delayed due to the failure of
and the Office to:
164
(1) Mail at least one of a notification or derivation proceedings under 35

under 35 U.S.C. 132 or a notice of allow- U.S.C. 135(a).
ance under 35 U.S.C. 151 not later than (d) Delays caused by secrecy order.
fourteen months after the date on Subject to the provisions of 35 U.S.C.
which the application was filed under 154(b) and this subpart, the term of an
35 U.S.C. 111(a) or the date the national original patent shall be adjusted if the
stage commenced under 35 U.S.C. 371(b) issuance of the patent was delayed due
or (f) in an international application; to the application being placed under a
(2) Respond to a reply under 35 U.S.C. secrecy order under 35 U.S.C. 181.
132 or to an appeal taken under 35
(e) Delays caused by successful appel-
U.S.C. 134 not later than four months
late review. Subject to the provisions of
after the date on which the reply was
filed or the appeal was taken; 35 U.S.C. 154(b) and this subpart, the
(3) Act on an application not later term of an original patent shall be ad-
than four months after the date of a justed if the issuance of the patent was
decision by the Patent Trial and Ap- delayed due to review by the Patent
peal Board under 35 U.S.C. 134 or 135 or Trial and Appeal Board under 35 U.S.C.
a decision by a Federal court under 35 134 or by a Federal court under 35
U.S.C. 141, 145, or 146 where at least one U.S.C. 141 or 145, if the patent was
allowable claim remains in the applica- issued under a decision in the review
tion; or reversing an adverse determination of
(4) Issue a patent not later than four patentability. If an application is re-
months after the date on which the manded by a panel of the Patent Trial
issue fee was paid under 35 U.S.C. 151 and Appeal Board and the remand is
and all outstanding requirements were the last action by a panel of the Patent
satisfied. Trial and Appeal Board prior to the
(b) Three-year pendency. Subject to mailing of a notice of allowance under
the provisions of 35 U.S.C. 154(b) and 35 U.S.C. 151 in the application, the re-
this subpart, the term of an original mand shall be considered a decision by
patent shall be adjusted if the issuance the Patent Trial and Appeal Board as
of the patent was delayed due to the that phrase is used in 35 U.S.C.
failure of the Office to issue a patent 154(b)(1)(A)(iii), a decision in the review
within three years after the date on
reversing an adverse determination of
which the application was filed under
patentability as that phrase is used in
35 U.S.C. 111(a) or the national stage
35 U.S.C. 154(b)(1)(C)(iii), and a final de-
commenced under 35 U.S.C. 371(b) or (f)
in an international application, but not cision in favor of the applicant under
including: § 1.703(e). A remand by a panel of the
(1) Any time consumed by continued Patent Trial and Appeal Board shall
examination of the application under not be considered a decision in the re-
35 U.S.C. 132(b); view reversing an adverse determina-
(2) Any time consumed by an inter- tion of patentability as provided in this
ference or derivation proceeding under paragraph if there is filed a request for
35 U.S.C. 135(a); continued examination under 35 U.S.C.
(3) Any time consumed by the impo- 132(b) that was not first preceded by
sition of a secrecy order under 35 the mailing, after such remand, of at
U.S.C. 181; least one of an action under 35 U.S.C.
(4) Any time consumed by review by 132 or a notice of allowance under 35
the Patent Trial and Appeal Board or a U.S.C. 151.
Federal court; or (f) The provisions of this section and
(5) Any delay in the processing of the §§ 1.703 through 1.705 apply only to
application by the Office that was re- original applications, except applica-
quested by the applicant. tions for a design patent, filed on or
(c) Delays caused by interference and after May 29, 2000, and patents issued
derivation proceedings. Subject to the on such applications.
provisions of 35 U.S.C. 154(b) and this
subpart, the term of an original patent [65 FR 56391, Sept. 18, 2000, as amended at 69
shall be adjusted if the issuance of the FR 21711, Apr. 22, 2004; 77 FR 46627, Aug. 6,
patent was delayed due to interference 2012; 78 FR 19420, Apr. 1, 2013]
165
§ 1.703 37 CFR Ch. I (7–1–16 Edition)
§ 1.703 Period of adjustment of patent date that is four months after the date
term due to examination delay. the issue fee was paid and all out-
(a) The period of adjustment under standing requirements were satisfied
§ 1.702(a) is the sum of the following pe- and ending on the date a patent was
riods: issued.
(1) The number of days, if any, in the (b) The period of adjustment under
period beginning on the day after the § 1.702(b) is the number of days, if any,
date that is fourteen months after the in the period beginning on the day
date on which the application was filed after the date that is three years after
under 35 U.S.C. 111(a) or the date the the date on which the application was
national stage commenced under 35 filed under 35 U.S.C. 111(a) or the na-
U.S.C. 371(b) or (f) in an international tional stage commenced under 35
application and ending on the date of U.S.C. 371(b) or (f) in an international
mailing of either an action under 35 application and ending on the date a
U.S.C. 132, or a notice of allowance patent was issued, but not including
under 35 U.S.C. 151, whichever occurs the sum of the following periods:
first;
(1) The number of days, if any, in the
period beginning on the day after the period beginning on the date on which
date that is four months after the date any request for continued examination
a reply under § 1.111 was filed and end- of the application under 35 U.S.C. 132(b)
ing on the date of mailing of either an was filed and ending on the date of
action under 35 U.S.C. 132, or a notice mailing of the notice of allowance
of allowance under 35 U.S.C. 151, which- under 35 U.S.C. 151;
ever occurs first; (2)(i) The number of days, if any, in
(3) The number of days, if any, in the the period beginning on the date an in-
period beginning on the day after the terference or derivation proceeding was
date that is four months after the date instituted to involve the application in
a reply in compliance with § 1.113(c) the interference or derivation pro-
was filed and ending on the date of ceeding under 35 U.S.C. 135(a) and end-
mailing of either an action under 35 ing on the date that the interference or
U.S.C. 132, or a notice of allowance derivation proceeding was terminated
under 35 U.S.C. 151, whichever occurs with respect to the application; and
first; (ii) The number of days, if any, in the
(4) The number of days, if any, in the period beginning on the date prosecu-
period beginning on the day after the tion in the application was suspended
date that is four months after the date by the Office due to interference or
an appeal brief in compliance with derivation proceedings under 35 U.S.C.
§ 41.37 of this title was filed and ending 135(a) not involving the application and
on the date of mailing of any of an ex- ending on the date of the termination
aminer’s answer under § 41.39 of this of the suspension;
title, an action under 35 U.S.C. 132, or
(3)(i) The number of days, if any, the
a notice of allowance under 35 U.S.C.
application was maintained in a sealed
151, whichever occurs first;
condition under 35 U.S.C. 181;
period beginning on the day after the (ii) The number of days, if any, in the
date that is four months after the date period beginning on the date of mailing
of a final decision by the Patent Trial of an examiner’s answer under § 41.39 of
and Appeal Board or by a Federal court this title in the application under se-
in an appeal under 35 U.S.C. 141 or a crecy order and ending on the date the
civil action under 35 U.S.C. 145 or 146 secrecy order was removed;
where at least one allowable claim re- (iii) The number of days, if any, in
mains in the application and ending on the period beginning on the date appli-
the date of mailing of either an action cant was notified that an interference
under 35 U.S.C. 132 or a notice of allow- or derivation proceeding under 35
ance under 35 U.S.C. 151, whichever oc- U.S.C. 135(a) would be instituted but
curs first; and for the secrecy order and ending on the
(6) The number of days, if any, in the date the secrecy order was removed;
period beginning on the day after the and
166
(iv) The number of days, if any, in (4) The number of days, if any, in the
the period beginning on the date of no- period beginning on the date of notifi-
tification under § 5.3(c) of this chapter cation under § 5.3(c) of this chapter and
and ending on the date of mailing of ending on the date of mailing of the no-
the notice of allowance under 35 U.S.C. tice of allowance under 35 U.S.C. 151.
151; and, (e) The period of adjustment under
(4) The number of days, if any, in the § 1.702(e) is the sum of the number of
period beginning on the date on which days, if any, in the period beginning on
jurisdiction over the application passes the date on which jurisdiction over the
to the Patent Trial and Appeal Board application passes to the Patent Trial
under § 41.35(a) of this chapter and end- and Appeal Board under § 41.35(a) of
ing on the date that jurisdiction by the this chapter and ending on the date of
Patent Trial and Appeal Board ends a final decision in favor of the appli-
under § 41.35(b) of this chapter or the cant by the Patent Trial and Appeal
date of the last decision by a Federal Board or by a Federal court in an ap-
court in an appeal under 35 U.S.C. 141 peal under 35 U.S.C. 141 or a civil ac-
or a civil action under 35 U.S.C. 145, tion under 35 U.S.C. 145.
whichever is later. (f) The adjustment will run from the
(c) The period of adjustment under expiration date of the patent as set
§ 1.702(c) is the sum of the following pe- forth in 35 U.S.C. 154(a)(2). To the ex-
riods, to the extent that the periods tent that periods of delay attributable
are not overlapping: to the grounds specified in § 1.702 over-
(1) The number of days, if any, in the lap, the period of adjustment granted
period beginning on the date an inter- under this section shall not exceed the
ference or derivation proceeding was actual number of days the issuance of
instituted to involve the application in the patent was delayed. The term of a
the interference or derivation pro- patent entitled to adjustment under
ceeding under 35 U.S.C. 135(a) and end-
§ 1.702 and this section shall be adjusted
ing on the date that the interference or
for the sum of the periods calculated
derivation proceeding was terminated
under paragraphs (a) through (e) of this
with respect to the application; and
section, to the extent that such periods
are not overlapping, less the sum of the
period beginning on the date prosecu-
periods calculated under § 1.704. The
tion in the application was suspended
date indicated on any certificate of
by the Office due to interference or
mailing or transmission under § 1.8
derivation proceedings under 35 U.S.C.
shall not be taken into account in this
135(a) not involving the application and
ending on the date of the termination calculation.
of the suspension. (g) No patent, the term of which has
(d) The period of adjustment under been disclaimed beyond a specified
§ 1.702(d) is the sum of the following pe- date, shall be adjusted under § 1.702 and
riods, to the extent that the periods this section beyond the expiration date
are not overlapping: specified in the disclaimer.
(1) The number of days, if any, the [65 FR 56392, Sept. 18, 2000, as amended at 69
application was maintained in a sealed FR 21711, Apr. 22, 2004; 69 FR 50001, Aug. 12,
condition under 35 U.S.C. 181; 2004; 77 FR 46628, Aug. 6, 2012; 77 FR 49360,
(2) The number of days, if any, in the Aug. 16, 2012; 78 FR 19420, Apr. 1, 2013; 80 FR
period beginning on the date of mailing 1356, Jan. 9, 2015]
of an examiner’s answer under § 41.39 of
this title in the application under se- § 1.704 Reduction of period of adjust-
crecy order and ending on the date the ment of patent term.
secrecy order was removed; (a) The period of adjustment of the
(3) The number of days, if any, in the term of a patent under §§ 1.703(a)
period beginning on the date applicant through (e) shall be reduced by a period
was notified that an interference or equal to the period of time during
derivation proceeding under 35 U.S.C. which the applicant failed to engage in
135(a) would be instituted but for the reasonable efforts to conclude prosecu-
secrecy order and ending on the date tion (processing or examination) of the
the secrecy order was removed; and application.
167
§ 1.704 37 CFR Ch. I (7–1–16 Edition)
(b) With respect to the grounds for which case the period of adjustment set
adjustment set forth in §§ 1.702(a) forth in § 1.703 shall be reduced by the
through (e), and in particular the number of days, if any, beginning on
ground of adjustment set forth in the date of abandonment or the date
§ 1.702(b), an applicant shall be deemed after the date the issue fee was due and
to have failed to engage in reasonable ending on the earlier of:
efforts to conclude processing or exam- (i) The date of mailing of the decision
ination of an application for the cumu- reviving the application or accepting
lative total of any periods of time in late payment of the issue fee; or
excess of three months that are taken (ii) The date that is four months
to reply to any notice or action by the after the date the grantable petition to
Office making any rejection, objection, revive the application or accept late
argument, or other request, measuring payment of the issue fee was filed;
such three-month period from the date (4) Failure to file a petition to with-
the notice or action was mailed or draw the holding of abandonment or to
given to the applicant, in which case revive an application within two
the period of adjustment set forth in months from the mailing date of a no-
§ 1.703 shall be reduced by the number tice of abandonment, in which case the
of days, if any, beginning on the day period of adjustment set forth in § 1.703
after the date that is three months shall be reduced by the number of days,
after the date of mailing or trans- if any, beginning on the day after the
mission of the Office communication date two months from the mailing date
notifying the applicant of the rejec- of a notice of abandonment and ending
tion, objection, argument, or other re- on the date a petition to withdraw the
quest and ending on the date the reply holding of abandonment or to revive
was filed. The period, or shortened the application was filed;
statutory period, for reply that is set (5) Conversion of a provisional appli-
in the Office action or notice has no ef- cation under 35 U.S.C. 111(b) to a non-
fect on the three-month period set provisional application under 35 U.S.C.
forth in this paragraph. 111(a) pursuant to 35 U.S.C. 111(b)(5), in
(c) Circumstances that constitute a which case the period of adjustment set
failure of the applicant to engage in forth in § 1.703 shall be reduced by the
reasonable efforts to conclude proc- number of days, if any, beginning on
essing or examination of an application the date the application was filed
also include the following cir- under 35 U.S.C. 111(b) and ending on the
cumstances, which will result in the date a request in compliance with
following reduction of the period of ad- § 1.53(c)(3) to convert the provisional
justment set forth in § 1.703 to the ex- application into a nonprovisional ap-
tent that the periods are not overlap- plication was filed;
ping: (6) Submission of a preliminary
(1) Suspension of action under § 1.103 amendment or other preliminary paper
at the applicant’s request, in which less than one month before the mailing
case the period of adjustment set forth of an Office action under 35 U.S.C. 132
in § 1.703 shall be reduced by the num- or notice of allowance under 35 U.S.C.
ber of days, if any, beginning on the 151 that requires the mailing of a sup-
date a request for suspension of action plemental Office action or notice of al-
under § 1.103 was filed and ending on lowance, in which case the period of ad-
the date of the termination of the sus- justment set forth in § 1.703 shall be re-
pension; duced by the lesser of:
(2) Deferral of issuance of a patent (i) The number of days, if any, begin-
under § 1.314, in which case the period ning on the day after the mailing date
of adjustment set forth in § 1.703 shall of the original Office action or notice
be reduced by the number of days, if of allowance and ending on the date of
any, beginning on the date a request mailing of the supplemental Office ac-
for deferral of issuance of a patent tion or notice of allowance; or
under § 1.314 was filed and ending on (ii) Four months;
the date the patent was issued; (7) Submission of a reply having an
(3) Abandonment of the application omission (§ 1.135(c)), in which case the

or late payment of the issue fee, in period of adjustment set forth in § 1.703
168
shall be reduced by the number of days, within three months from the date on
if any, beginning on the day after the which a notice of appeal to the Patent
date the reply having an omission was Trial and Appeal Board was filed under
filed and ending on the date that the 35 U.S.C. 134 and § 41.31 of this chapter,
reply or other paper correcting the in which case the period of adjustment
omission was filed; set forth in § 1.703 shall be reduced by
(8) Submission of a supplemental the number of days, if any, beginning
reply or other paper, other than a sup- on the day after the date three months
plemental reply or other paper ex- from the date on which a notice of ap-
pressly requested by the examiner, peal to the Patent Trial and Appeal
after a reply has been filed, in which Board was filed under 35 U.S.C. 134 and
case the period of adjustment set forth § 41.31 of this chapter, and ending on
in § 1.703 shall be reduced by the num- the date an appeal brief in compliance
ber of days, if any, beginning on the with § 41.37 of this chapter or a request
day after the date the initial reply was for continued examination in compli-
filed and ending on the date that the ance with § 1.114 was filed;
supplemental reply or other such paper (12) Submission of a request for con-
was filed; tinued examination under 35 U.S.C.
(9) Submission of an amendment or 132(b) after any notice of allowance
other paper after a decision by the Pat- under 35 U.S.C. 151 has been mailed, in
ent Trial and Appeal Board, other than which case the period of adjustment set
a decision designated as containing a forth in § 1.703 shall be reduced by the
new ground of rejection under § 41.50 (b) number of days, if any, beginning on
of this title or statement under the day after the date of mailing of the
§ 41.50(c) of this title, or a decision by a notice of allowance under 35 U.S.C. 151
Federal court, less than one month be- and ending on the date the request for
fore the mailing of an Office action continued examination under 35 U.S.C.
under 35 U.S.C. 132 or notice of allow- 132(b) was filed;
ance under 35 U.S.C. 151 that requires (13) Failure to provide an application
the mailing of a supplemental Office in condition for examination as defined
action or supplemental notice of allow- in paragraph (f) of this section within
ance, in which case the period of ad- eight months from either the date on
justment set forth in § 1.703 shall be re- which the application was filed under
duced by the lesser of: 35 U.S.C. 111(a) or the date of com-
(i) The number of days, if any, begin- mencement of the national stage under
ning on the day after the mailing date 35 U.S.C. 371(b) or (f) in an inter-
of the original Office action or notice national application, in which case the
of allowance and ending on the mailing period of adjustment set forth in § 1.703
date of the supplemental Office action shall be reduced by the number of days,
or notice of allowance; or if any, beginning on the day after the
(ii) Four months; date that is eight months from either
(10) Submission of an amendment the date on which the application was
under § 1.312 or other paper, other than filed under 35 U.S.C. 111(a) or the date
a request for continued examination in of commencement of the national stage
compliance with § 1.114, after a notice under 35 U.S.C. 371(b) or (f) in an inter-
of allowance has been given or mailed, national application and ending on the
in which case the period of adjustment date the application is in condition for
set forth in § 1.703 shall be reduced by examination as defined in paragraph (f)
the lesser of: of this section; and
(i) The number of days, if any, begin- (14) Further prosecution via a con-
ning on the date the amendment under tinuing application, in which case the
§ 1.312 or other paper was filed and end- period of adjustment set forth in § 1.703
ing on the mailing date of the Office shall not include any period that is
action or notice in response to the prior to the actual filing date of the ap-
amendment under § 1.312 or such other plication that resulted in the patent.
paper; or (d)(1) A paper containing only an in-
(ii) Four months; formation disclosure statement in
(11) Failure to file an appeal brief in compliance with §§ 1.97 and 1.98 will not
compliance with § 41.37 of this chapter be considered a failure to engage in
169
§ 1.705 37 CFR Ch. I (7–1–16 Edition)
reasonable efforts to conclude prosecu- specified in § 1.63(b), the basic filing fee
tion (processing or examination) of the (§ 1.16(a) or § 1.16(c)), the search fee
application under paragraphs (c)(6), (§ 1.16(k) or § 1.16(m)), the examination
(c)(8), (c)(9), or (c)(10) of this section, fee (§ 1.16(o) or § 1.16(q)), any certified
and a request for continued examina- copy of the previously filed application
tion in compliance with § 1.114 with no required by § 1.57(a), and any applica-
submission other than an information tion size fee required by the Office
disclosure statement in compliance under § 1.16(s). An international appli-
with §§ 1.97 and 1.98 will not be consid- cation is in condition for examination
ered a failure to engage in reasonable when the application has entered the
efforts to conclude prosecution (proc- national stage as defined in § 1.491(b),
essing or examination) of the applica- and includes a specification, including
tion under paragraph (c)(12) of this sec- at least one claim and an abstract
tion, if the paper or request for contin- (§ 1.72(b)), and has papers in compliance
ued examination is accompanied by a with § 1.52, drawings (if any) in compli-
statement that each item of informa- ance with § 1.84, a sequence listing in
tion contained in the information dis- compliance with § 1.821 through § 1.825
closure statement: (if applicable), the inventor’s oath or
(i) Was first cited in any communica- declaration or an application data
tion from a patent office in a counter- sheet containing the information speci-
part foreign or international applica- fied in § 1.63(b), the search fee
tion or from the Office, and this com- (§ 1.492(b)), the examination fee
munication was not received by any in- (§ 1.492(c)), and any application size fee
dividual designated in § 1.56(c) more required by the Office under § 1.492(j).
than thirty days prior to the filing of An application shall be considered as
the information disclosure statement; having papers in compliance with § 1.52,
or drawings (if any) in compliance with
(ii) Is a communication that was § 1.84, and a sequence listing in compli-
issued by a patent office in a counter- ance with § 1.821 through § 1.825 (if ap-
part foreign or international applica- plicable) for purposes of this paragraph
tion or by the Office, and this commu- on the filing date of the latest reply (if
nication was not received by any indi- any) correcting the papers, drawings,
vidual designated in § 1.56(c) more than or sequence listing that is prior to the
thirty days prior to the filing of the in- date of mailing of either an action
formation disclosure statement. under 35 U.S.C. 132 or a notice of allow-
(2) The thirty-day period set forth in ance under 35 U.S.C. 151, whichever oc-
paragraph (d)(1) of this section is not curs first.
extendable.
(e) The submission of a request under FR 21711, Apr. 22, 2004; 69 FR 50002, Aug. 12,
§ 1.705(c) for reinstatement of reduced 2004; 72 FR 46843, Aug. 21, 2007; 74 FR 52691,
patent term adjustment will not be Oct. 14, 2009; 76 FR 74702, Dec. 1, 2011; 77 FR
considered a failure to engage in rea- 46628, Aug. 6, 2012; 77 FR 49360, Aug. 16, 2012;
sonable efforts to conclude prosecution 78 FR 19420, Apr. 1, 2013; 78 FR 62408, Oct. 21,
(processing or examination) of the ap- 2013; 80 FR 1356, Jan. 9, 2015]
plication under paragraph (c)(10) of this
section. § 1.705 Patent term adjustment deter-
mination.
(f) An application filed under 35
U.S.C. 111(a) is in condition for exam- (a) The patent will include notifica-
ination when the application includes a tion of any patent term adjustment
specification, including at least one under 35 U.S.C. 154(b).
claim and an abstract (§ 1.72(b)), and (b) Any request for reconsideration of
has papers in compliance with § 1.52, the patent term adjustment indicated
drawings (if any) in compliance with on the patent must be by way of an ap-
§ 1.84, any English translation required plication for patent term adjustment
by § 1.52(d) or § 1.57(a), a sequence list- filed no later than two months from
ing in compliance with § 1.821 through the date the patent was granted. This
§ 1.825 (if applicable), the inventor’s two-month time period may be ex-
oath or declaration or an application tended under the provisions of

data sheet containing the information § 1.136(a). An application for patent
170
term adjustment under this section the rejection, objection, argument, or

must be accompanied by: other request.
(1) The fee set forth in § 1.18(e); and (d) No submission or petition on be-
(2) A statement of the facts involved, half of a third party concerning patent
specifying: term adjustment under 35 U.S.C. 154(b)
(i) The correct patent term adjust- will be considered by the Office. Any
ment and the basis or bases under such submission or petition will be re-
§ 1.702 for the adjustment; turned to the third party, or otherwise
(ii) The relevant dates as specified in disposed of, at the convenience of the
§§ 1.703(a) through (e) for which an ad- Office.
justment is sought and the adjustment
as specified in § 1.703(f) to which the [65 FR 56394, Sept. 18, 2000, as amended at 69
patent is entitled; FR 21711, Apr. 22, 2004; 78 FR 19420, Apr. 1,
(iii) Whether the patent is subject to 2013]
a terminal disclaimer and any expira-
tion date specified in the terminal dis- EXTENSION OF PATENT TERM DUE TO
claimer; and REGULATORY REVIEW
(iv)(A) Any circumstances during the
§ 1.710 Patents subject to extension of
prosecution of the application result- the patent term.
ing in the patent that constitute a fail-
ure to engage in reasonable efforts to (a) A patent is eligible for extension
conclude processing or examination of of the patent term if the patent claims
such application as set forth in § 1.704; a product as defined in paragraph (b) of
or this section, either alone or in com-
(B) That there were no circumstances bination with other ingredients that
constituting a failure to engage in rea- read on a composition that received
sonable efforts to conclude processing permission for commercial marketing
or examination of such application as or use, or a method of using such a
set forth in § 1.704. product, or a method of manufacturing
(c) Any request for reinstatement of such a product, and meets all other
all or part of the period of adjustment conditions and requirements of this
reduced pursuant to § 1.704(b) for failing subpart.
to reply to a rejection, objection, argu- (b) The term product referred to in
ment, or other request within three paragraph (a) of this section means—
months of the date of mailing of the (1) The active ingredient of a new
Office communication notifying the ap- human drug, antibiotic drug, or human
plicant of the rejection, objection, ar- biological product (as those terms are
gument, or other request must be filed used in the Federal Food, Drug, and
prior to the issuance of the patent. Cosmetic Act and the Public Health
This time period is not extendable. Any
Service Act) including any salt or ester
request for reinstatement of all or part
of the active ingredient, as a single en-
of the period of adjustment reduced
tity or in combination with another ac-
pursuant to § 1.704(b) under this para-
tive ingredient; or
graph must also be accompanied by:
(1) The fee set forth in § 1.18(f); and (2) The active ingredient of a new
(2) A showing to the satisfaction of animal drug or veterinary biological
the Director that, in spite of all due product (as those terms are used in the
care, the applicant was unable to reply Federal Food, Drug, and Cosmetic Act
to the rejection, objection, argument, and the Virus-Serum-Toxin Act) that is
or other request within three months not primarily manufactured using re-
of the date of mailing of the Office combinant DNA, recombinant RNA,
communication notifying the applicant hybridoma technology, or other proc-
of the rejection, objection, argument, esses including site specific genetic
or other request. The Office shall not manipulation techniques, including
grant any request for reinstatement for any salt or ester of the active ingre-
more than three additional months for dient, as a single entity or in combina-
each reply beyond three months from tion with another active ingredient; or
the date of mailing of the Office com- (3) Any medical device, food additive,
munication notifying the applicant of or color additive subject to regulation
171
§ 1.720 37 CFR Ch. I (7–1–16 Edition)
under the Federal Food, Drug, and Cos- (f) The application is submitted with-
metic Act. in the sixty-day period beginning on
[54 FR 30379, July 20, 1989]
the date the product first received per-
mission for commercial marketing or
§ 1.720 Conditions for extension of pat- use under the provisions of law under
ent term. which the applicable regulatory review
The term of a patent may be ex- period occurred; or in the case of a pat-
tended if: ent claiming a method of manufac-
(a) The patent claims a product or a turing the product which primarily
method of using or manufacturing a uses recombinant DNA technology in
product as defined in § 1.710; the manufacture of the product, the ap-
(b) The term of the patent has never plication for extension is submitted
been previously extended, except for within the sixty-day period beginning
extensions issued pursuant to §§ 1.701, on the date of the first permitted com-
1.760, or § 1.790; mercial marketing or use of a product
(c) An application for extension is manufactured under the process
submitted in compliance with § 1.740; claimed in the patent; or in the case of
(d) The product has been subject to a a patent that claims a new animal drug
regulatory review period as defined in or a veterinary biological product that
35 U.S.C. 156(g) before its commercial is not covered by the claims in any
marketing or use; other patent that has been extended,
(e) The product has received permis- and said drug or product has received
sion for commercial marketing or use permission for the commercial mar-
and— keting or use in non-food-producing
(1) The permission for the commer- animals, the application for extension
cial marketing or use of the product is is submitted within the sixty-day pe-
the first received permission for com- riod beginning on the date of the first
mercial marketing or use under the permitted commercial marketing or
provision of law under which the appli- use of the drug or product for adminis-
cable regulatory review occurred, or tration to a food-producing animal;
(2) In the case of a patent other than (g) The term of the patent, including
one directed to subject matter within any interim extension issued pursuant
§ 1.710(b)(2) claiming a method of manu- to § 1.790, has not expired before the
facturing the product that primarily submission of an application in compli-
uses recombinant DNA technology in ance with § 1.741; and
the manufacture of the product, the (h) No other patent term has been ex-
permission for the commercial mar- tended for the same regulatory review
keting or use is the first received per- period for the product.
mission for the commercial marketing [52 FR 9394, Mar. 24, 1987, as amended at 54
or use of a product manufactured under FR 30380, July 20, 1989; 65 FR 54679, Sept. 8,
the process claimed in the patent, or 2000]
(3) In the case of a patent claiming a
new animal drug or a veterinary bio- § 1.730 Applicant for extension of pat-
logical product that is not covered by ent term; signature requirements.
the claims in any other patent that has (a) Any application for extension of a
been extended, and has received per- patent term must be submitted by the
mission for the commercial marketing owner of record of the patent or its
or use in non-food-producing animals agent and must comply with the re-
and in food-producing animals, and was quirements of § 1.740.
not extended on the basis of the regu- (b) If the application is submitted by
latory review period for use in non- the patent owner, the application must
food-producing animals, the permission be signed either by:
for the commercial marketing or use of (1) The patent owner in compliance
the drug or product after the regu- with § 3.73(c) of this chapter; or
latory review period for use in food- (2) A registered practitioner on be-
producing animals is the first per- half of the patent owner.
mitted commercial marketing or use of (c) If the application is submitted on
the drug or product for administration behalf of the patent owner by an agent
to a food-producing animal. of the patent owner (e.g., a licensee of
172
the patent owner), the application (6) A complete identification of the

must be signed by a registered practi- patent for which an extension is being
tioner on behalf of the agent. The Of- sought by the name of the inventor,
fice may require proof that the agent is the patent number, the date of issue,
authorized to act on behalf of the pat- and the date of expiration;
ent owner. (7) A copy of the patent for which an
(d) If the application is signed by a extension is being sought, including
registered practitioner, the Office may the entire specification (including
require proof that the practitioner is claims) and drawings;
authorized to act on behalf of the pat- (8) A copy of any disclaimer, certifi-
ent owner or agent of the patent cate of correction, receipt of mainte-
owner. nance fee payment, or reexamination
[65 FR 54679, Sept. 8, 2000, as amended at 77 certificate issued in the patent;
FR 48825, Aug. 14, 2012] (9) A statement that the patent
claims the approved product, or a
§ 1.740 Formal requirements for appli- method of using or manufacturing the
cation for extension of patent term; approved product, and a showing which
correction of informalities. lists each applicable patent claim and
(a) An application for extension of demonstrates the manner in which at
patent term must be made in writing least one such patent claim reads on:
to the Director. A formal application (i) The approved product, if the listed
for the extension of patent term must claims include any claim to the ap-
include: proved product;
(1) A complete identification of the (ii) The method of using the approved
approved product as by appropriate product, if the listed claims include
chemical and generic name, physical any claim to the method of using the
structure or characteristics; approved product; and
(2) A complete identification of the (iii) The method of manufacturing
Federal statute including the applica- the approved product, if the listed
ble provision of law under which the claims include any claim to the meth-
regulatory review occurred; od of manufacturing the approved prod-
(3) An identification of the date on uct;
which the product received permission
(10) A statement beginning on a new
for commercial marketing or use under
page of the relevant dates and informa-
the provision of law under which the
tion pursuant to 35 U.S.C. 156(g) in
applicable regulatory review period oc-
order to enable the Secretary of Health
curred;
and Human Services or the Secretary
(4) In the case of a drug product, an
of Agriculture, as appropriate, to de-
identification of each active ingredient
termine the applicable regulatory re-
in the product and as to each active in-
view period as follows:
gredient, a statement that it has not
been previously approved for commer- (i) For a patent claiming a human
cial marketing or use under the Fed- drug, antibiotic, or human biological
eral Food, Drug, and Cosmetic Act, the product:
Public Health Service Act, or the (A) The effective date of the inves-
Virus-Serum-Toxin Act, or a statement tigational new drug (IND) application
of when the active ingredient was ap- and the IND number;
proved for commercial marketing or (B) The date on which a new drug ap-
use (either alone or in combination plication (NDA) or a Product License
with other active ingredients), the use Application (PLA) was initially sub-
for which it was approved, and the pro- mitted and the NDA or PLA number;
vision of law under which it was ap- and
proved. (C) The date on which the NDA was
(5) A statement that the application approved or the Product License
is being submitted within the sixty day issued;
period permitted for submission pursu- (ii) For a patent claiming a new ani-
ant to § 1.720(f) and an identification of mal drug:
the date of the last day on which the (A) The date a major health or envi-
application could be submitted; ronmental effects test on the drug was
173
§ 1.741 37 CFR Ch. I (7–1–16 Edition)
initiated, and any available substan- view period with respect to the ap-
tiation of that date, or the date of an proved product and the significant
exemption under subsection (j) of Sec- dates applicable to such activities;
tion 512 of the Federal Food, Drug, and (12) A statement beginning on a new
Cosmetic Act became effective for such page that in the opinion of the appli-
animal drug; cant the patent is eligible for the ex-
(B) The date on which a new animal tension and a statement as to the
drug application (NADA) was initially length of extension claimed, including
submitted and the NADA number; and how the length of extension was deter-
(C) The date on which the NADA was mined;
approved; (13) A statement that applicant ac-
(iii) For a patent claiming a veteri- knowledges a duty to disclose to the
nary biological product: Director of the United States Patent
(A) The date the authority to prepare and Trademark Office and the Sec-
an experimental biological product retary of Health and Human Services
under the Virus-Serum-Toxin Act be-
or the Secretary of Agriculture any in-
came effective;
formation which is material to the de-
(B) The date an application for a li-
termination of entitlement to the ex-
cense was submitted under the Virus-
tension sought (see § 1.765);
Serum-Toxin Act; and
(C) The date the license issued; (14) The prescribed fee for receiving
(iv) For a patent claiming a food or and acting upon the application for ex-
color additive: tension (see § 1.20(j)); and
(A) The date a major health or envi- (15) The name, address, and telephone
ronmental effects test on the additive number of the person to whom inquir-
was initiated and any available sub- ies and correspondence relating to the
stantiation of that date; application for patent term extension
(B) The date on which a petition for are to be directed.
product approval under the Federal (b) The application under this section
Food, Drug and Cosmetic Act was ini- must be accompanied by two additional
tially submitted and the petition num- copies of such application (for a total
ber; and of three copies).
(C) The date on which the FDA pub- (c) If an application for extension of
lished a FEDERAL REGISTER notice list- patent term is informal under this sec-
ing the additive for use; tion, the Office will so notify the appli-
(v) For a patent claiming a medical cant. The applicant has two months
device: from the mail date of the notice, or
(A) The effective date of the inves- such time as is set in the notice, within
tigational device exemption (IDE) and which to correct the informality. Un-
the IDE number, if applicable, or the less the notice indicates otherwise, this
date on which the applicant began the time period may be extended under the
first clinical investigation involving provisions of § 1.136.
the device, if no IDE was submitted,
and any available substantiation of [54 FR 9394, Mar. 24, 1987, as amended at 54
that date; FR 30380, July 20, 1989; 56 FR 65155, Dec. 13,
(B) The date on which the application 1991; 65 FR 54679, Sept. 8, 2000; 68 FR 14337,
Mar. 25, 2003]
for product approval or notice of com-
pletion of a product development pro- § 1.741 Complete application given a
tocol under Section 515 of the Federal filing date; petition procedure.
Food, Drug and Cosmetic Act was ini-
tially submitted and the number of the (a) The filing date of an application
application; and for extension of a patent term is the
(C) The date on which the application date on which a complete application
was approved or the protocol declared is received in the Office or filed pursu-
to be completed; ant to the procedures set forth in § 1.8
(11) A brief description beginning on or § 1.10. A complete application must
a new page of the significant activities include:
undertaken by the marketing applicant (1) An identification of the approved

during the applicable regulatory re- product;
174
(2) An identification of each Federal officials and may be made at any time
statute under which regulatory review before the certificate of extension is
occurred; issued. The Director or other appro-
(3) An identification of the patent for priate officials may require from appli-
which an extension is being sought; cant further information or make such
(4) An identification of each claim of independent inquiries as desired before
the patent which claims the approved a final determination is made on
product or a method of using or manu- whether a patent is eligible for exten-
facturing the approved product; sion. In an application for extension
(5) Sufficient information to enable filed in compliance with § 1.740, a no-
the Director to determine under sub- tice will be mailed to applicant con-
sections (a) and (b) of 35 U.S.C. 156 the taining the determination as to the eli-
eligibility of a patent for extension, gibility of the patent for extension and
and the rights that will be derived from the period of time of the extension, if
the extension, and information to en- any. This notice shall constitute the
able the Director and the Secretary of final determination as to the eligi-
Health and Human Services or the Sec- bility and any period of extension of
retary of Agriculture to determine the the patent. A single request for recon-
length of the regulatory review period; sideration of a final determination
and
may be made if filed by the applicant
(6) A brief description of the activi-
within such time as may be set in the
ties undertaken by the marketing ap-
notice of final determination or, if no
plicant during the applicable regu-
time is set, within one month from the
latory review period with respect to
date of the final determination. The
the approved product and the signifi-
time periods set forth herein are sub-
cant dates applicable to such activi-
ject to the provisions of § 1.136.
ties.
(b) If an application for extension of [60 FR 25618, May 12, 1995]
patent term is incomplete under this
section, the Office will so notify the § 1.760 Interim extension of patent
applicant. If applicant requests review term under 35 U.S.C. 156(e)(2).
of a notice that an application is in- An applicant who has filed a formal
complete, or review of the filing date application for extension in compliance
accorded an application under this sec- with § 1.740 may request one or more in-
tion, applicant must file a petition pur- terim extensions for periods of up to
suant to this paragraph accompanied one year each pending a final deter-
by the fee set forth in § 1.17(f) within mination on the application pursuant
two months of the mail date of the no- to § 1.750. Any such request should be
tice that the application is incomplete, filed at least three months prior to the
or the notice according the filing date expiration date of the patent. The Di-
complained of. Unless the notice indi- rector may issue interim extensions,
cates otherwise, this time period may without a request by the applicant, for
be extended under the provisions of periods of up to one year each until a
§ 1.136. final determination is made. The pat-
[52 FR 9394, Mar. 24, 1987, as amended at 59 ent owner or agent will be notified
FR 54503, Oct. 22, 1993; 61 FR 64028, Dec. 3, when an interim extension is granted
1996; 65 FR 54680, Sept. 8, 2000; 69 FR 56546, and notice of the extension will be pub-
Sept. 21, 2004] lished in the Official Gazette of the
§ 1.750 Determination of eligibility for United States Patent and Trademark Of-
extension of patent term. fice. The notice will be recorded in the
official file of the patent and will be
A determination as to whether a pat- considered as part of the original pat-
ent is eligible for extension may be ent. In no event will the interim exten-
made by the Director solely on the sions granted under this section be
basis of the representations contained longer than the maximum period for
in the application for extension filed in
extension to which the applicant would
compliance with § 1.740 or § 1.790. This
be eligible.
determination may be delegated to ap-
propriate Patent and Trademark Office [65 FR 54680, Sept. 8, 2000]
175
§ 1.765 37 CFR Ch. I (7–1–16 Edition)
§ 1.765 Duty of disclosure in patent fraud on the Office or the Secretary

term extension proceedings. was practiced or attempted or the duty
(a) A duty of candor and good faith of disclosure was violated through bad
toward the Patent and Trademark Of- faith or gross negligence in connection
fice and the Secretary of Health and with the patent term extension pro-
Human Services or the Secretary of ceeding. If it is established by clear and
Agriculture rests on the patent owner convincing evidence that any fraud was
or its agent, on each attorney or agent practiced or attempted on the Office or
who represents the patent owner and the Secretary in connection with the
on every other individual who is sub- patent term extension proceeding or
stantively involved on behalf of the that there was any violation of the
patent owner in a patent term exten- duty of disclosure through bad faith or
sion proceeding. All such individuals gross negligence in connection with the
who are aware, or become aware, of patent term extension proceeding, a
material information adverse to a de-
final determination will be made pur-
termination of entitlement to the ex-
suant to § 1.750 that the patent is not
tension sought, which has not been pre-
viously made of record in the patent eligible for extension.
term extension proceeding must bring (d) The duty of disclosure pursuant
such information to the attention of to this section rests on the individuals
the Office or the Secretary, as appro- identified in paragraph (a) of this sec-
priate, in accordance with paragraph tion and no submission on behalf of
(b) of this section, as soon as it is prac- third parties, in the form of protests or
tical to do so after the individual be- otherwise, will be considered by the Of-
comes aware of the information. Infor- fice. Any such submissions by third
mation is material where there is a parties to the Office will be returned to
substantial likelihood that the Office the party making the submission, or
or the Secretary would consider it im- otherwise disposed of, without consid-
portant in determinations to be made eration by the Office.
in the patent term extension pro-
ceeding. [24 FR 10332, Dec. 22, 1959, as amended at 54
(b) Disclosures pursuant to this sec- FR 30381, July 20, 1989; 60 FR 25618, May 12,
tion must be accompanied by a copy of 1995]
each written document which is being
§ 1.770 Express withdrawal of applica-
disclosed. The disclosure must be made tion for extension of patent term.
to the Office or the Secretary, as ap-
propriate, unless the disclosure is ma- An application for extension of pat-
terial to determinations to be made by ent term may be expressly withdrawn
both the Office and the Secretary, in before a determination is made pursu-
which case duplicate copies, certified ant to § 1.750 by filing in the Office, in
as such, must be filed in the Office and duplicate, a written declaration of
with the Secretary. Disclosures pursu- withdrawal signed by the owner of
ant to this section may be made to the record of the patent or its agent. An
Office or the Secretary, as appropriate, application may not be expressly with-
through an attorney or agent having drawn after the date permitted for
responsibility on behalf of the patent reply to the final determination on the
owner or its agent for the patent term application. An express withdrawal
extension proceeding or through a pat- pursuant to this section is effective
ent owner acting on his or her own be- when acknowledged in writing by the
half. Disclosure to such an attorney, Office. The filing of an express with-
agent or patent owner shall satisfy the
drawal pursuant to this section and its
duty of any other individual. Such an
acceptance by the Office does not enti-
attorney, agent or patent owner has no
tle applicant to a refund of the filing
duty to transmit information which is
not material to the determination of fee (§ 1.20(j)) or any portion thereof.
entitlement to the extension sought. [62 FR 53201, Oct. 10, 1997]
(c) No patent will be determined eli-
gible for extension and no extension

will be issued if it is determined that
176
§ 1.775 Calculation of patent term ex- (i) The number of days in the periods
tension for a human drug, anti- of paragraphs (c)(1) and (c)(2) of this
biotic drug or human biological section which were on and before the
product. date on which the patent issued;
(a) If a determination is made pursu- (ii) The number of days in the periods
ant to § 1.750 that a patent for a human of paragraphs (c)(1) and (c)(2) of this
drug, antibiotic drug or human biologi- section during which it is determined
cal product is eligible for extension, under 35 U.S.C. 156(d)(2)(B) by the Sec-
the term shall be extended by the time retary of Health and Human Services
as calculated in days in the manner in- that applicant did not act with due
dicated by this section. The patent diligence;
term extension will run from the origi- (iii) One-half the number of days re-
nal expiration date of the patent or maining in the period defined by para-
any earlier date set by terminal dis- graph (c)(1) of this section after that
claimer (§ 1.321). period is reduced in accordance with
(b) The term of the patent for a paragraphs (d)(1) (i) and (ii) of this sec-
human drug, antibiotic drug or human tion; half days will be ignored for pur-
biological product will be extended by poses of subtraction;
the length of the regulatory review pe- (2) By adding the number of days de-
riod for the product as determined by termined in paragraph (d)(1) of this sec-
the Secretary of Health and Human tion to the original term of the patent
Services, reduced as appropriate pursu- as shortened by any terminal dis-
ant to paragraphs (d)(1) through (d)(6) claimer;
of this section. (3) By adding 14 years to the date of
(c) The length of the regulatory re- approval of the application under sec-
view period for a human drug, anti- tion 351 of the Public Health Service
biotic drug or human biological prod- Act, or subsection (b) of section 505 or
uct will be determined by the Sec- section 507 of the Federal Food, Drug,
retary of Health and Human Services. and Cosmetic Act;
Under 35 U.S.C. 156(g)(1)(B), it is the (4) By comparing the dates for the
sum of— ends of the periods obtained pursuant
(1) The number of days in the period to paragraphs (d)(2) and (d)(3) of this
beginning on the date an exemption section with each other and selecting
under subsection (i) of section 505 or the earlier date;
subsection (d) of section 507 of the Fed- (5) If the original patent was issued
eral Food, Drug, and Cosmetic Act be- after September 24, 1984,
came effective for the approved prod- (i) By adding 5 years to the original
uct and ending on the date the applica- expiration date of the patent or any
tion was initially submitted for such earlier date set by terminal disclaimer;
product under those sections or under and
section 351 of the Public Health Service (ii) By comparing the dates obtained
Act; and pursuant to paragraphs (d)(4) and
(2) The number of days in the period (d)(5)(i) of this section with each other
beginning on the date the application and selecting the earlier date;
was initially submitted for the ap- (6) If the original patent was issued
proved product under section 351 of the before September 24, 1984, and
Public Health Service Act, subsection (i) If no request was submitted for an
(b) of section 505 or section 507 of the exemption under subsection (i) of sec-
Federal Food, Drug, and Cosmetic Act tion 505 or subsection (d) of section 507
and ending on the date such applica- of the Federal Food, Drug, and Cos-
tion was approved under such section. metic Act before September 24, 1984,
(d) The term of the patent as ex- by—
tended for a human drug, antibiotic (A) Adding 5 years to the original ex-
drug or human biological product will piration date of the patent or earlier
be determined by— date set by terminal disclaimer; and
(1) Subtracting from the number of (B) By comparing the dates obtained
days determined by the Secretary of pursuant to paragraphs (d)(4) and
Health and Human Services to be in (d)(6)(i)(A) of this section with each

the regulatory review period: other and selecting the earlier date; or
177
§ 1.776 37 CFR Ch. I (7–1–16 Edition)
(ii) If a request was submitted for an Food, Drug, and Cosmetic Act request-
exemption under subsection (i) of sec- ing the issuance of a regulation for use
tion 505 or subsection (d) of section 507 of the product, and ending on the date
of the Federal Food, Drug, or Cosmetic such regulation became effective or, if
Act before September 24, 1984 and the objections were filed to such regula-
commercial marketing or use of the tion, ending on the date such objec-
product was not approved before Sep- tions were resolved and commercial
tember 24, 1984, by— marketing was permitted or, if com-
(A) Adding 2 years to the original ex- mercial marketing was permitted and
piration date of the patent or earlier later revoked pending further pro-
date set by terminal disclaimer, and ceedings as a result of such objections,
(B) By comparing the dates obtained ending on the date such proceedings
pursuant to paragraphs (d)(4) and were finally resolved and commercial
(d)(6)(ii)(A) of this section with each marketing was permitted.
other and selecting the earlier date. (d) The term of the patent as ex-
[52 FR 9394, Mar. 24, 1987, as amended at 54 tended for a food additive or color addi-
FR 30381, July 20, 1989] tive will be determined by
(1) Subtracting from the number of
§ 1.776 Calculation of patent term ex- days determined by the Secretary of
tension for a food additive or color Health and Human Services to be in
additive. the regulatory review period:
(a) If a determination is made pursu- (i) The number of days in the periods
ant to § 1.750 that a patent for a food of paragraphs (c)(1) and (c)(2) of this
additive or color additive is eligible for section which were on and before the
extension, the term shall be extended date on which the patent issued;
by the time as calculated in days in the (ii) The number of days in the periods
manner indicated by this section. The of paragraphs (c)(1) and (c)(2) of this
patent term extension will run from section during which it is determined
the original expiration date of the pat- under 35 U.S.C. 156(d)(2)(B) by the Sec-
ent or earlier date set by terminal dis- retary of Health and Human Services
claimer (§ 1.321). that applicant did not act with due
(b) The term of the patent for a food diligence;
additive or color additive will be ex- (iii) The number of days equal to one-
tended by the length of the regulatory half the number of days remaining in
review period for the product as deter- the period defined by paragraph (c)(1)
mined by the Secretary of Health and of this section after that period is re-
Human Services, reduced as appro- duced in accordance with paragraphs
priate pursuant to paragraphs (d)(1) (d)(1) (i) and (ii) of this section; half
through (d)(6) of this section. days will be ignored for purposes of
(c) The length of the regulatory re- subtraction;
view period for a food additive or color (2) By adding the number of days de-
additive will be determined by the Sec- termined in paragraph (d)(1) of this sec-
retary of Health and Human Services. tion to the original term of the patent
Under 35 U.S.C. 156(g)(2)(B), it is the as shortened by any terminal dis-
sum of— claimer;
(1) The number of days in the period (3) By adding 14 years to the date a
beginning on the date a major health regulation for use of the product be-
or environmental effects test on the came effective or, if objections were
additive was initiated and ending on filed to such regulation, to the date
the date a petition was initially sub- such objections were resolved and com-
mitted with respect to the approved mercial marketing was permitted or, if
product under the Federal Food, Drug, commercial marketing was permitted
and Cosmetic Act requesting the and later revoked pending further pro-
issuance of a regulation for use of the ceedings as a result of such objections,
product; and to the date such proceedings were fi-
(2) The number of days in the period nally resolved and commercial mar-
beginning on the date a petition was keting was permitted;
initially submitted with respect to the (4) By comparing the dates for the
approved product under the Federal ends of the periods obtained pursuant
178
to paragraphs (d)(2) and (d)(3) of this ices, reduced as appropriate pursuant

section with each other and selecting to paragraphs (d)(1) through (d)(6) of
the earlier date; this section.
(5) If the original patent was issued (c) The length of the regulatory re-
after September 24, 1984, view period for a medical device will be
(i) By adding 5 years to the original determined by the Secretary of Health
expiration date of the patent or earlier and Human Services. Under 35 U.S.C.
date set by terminal disclaimer; and 156(g)(3)(B), it is the sum of
(ii) By comparing the dates obtained (1) The number of days in the period
pursuant to paragraphs (d)(4) and beginning on the date a clinical inves-
(d)(5)(i) of this section with each other tigation on humans involving the de-
and selecting the earlier date; vice was begun and ending on the date
(6) If the original patent was issued an application was initially submitted
before September 24, 1984, and with respect to the device under sec-
(i) If no major health or environ- tion 515 of the Federal Food, Drug, and
mental effects test was initiated and Cosmetic Act; and
no petition for a regulation or applica- (2) The number of days in the period
tion for registration was submitted be- beginning on the date the application
fore September 24, 1984, by— was initially submitted with respect to
(A) Adding 5 years to the original ex- the device under section 515 of the Fed-
piration date of the patent or earlier eral Food, Drug, and Cosmetic Act, and
date set by terminal disclaimer, and ending on the date such application
(B) By comparing the dates obtained was approved under such Act or the pe-
pursuant to paragraphs (d)(4) and riod beginning on the date a notice of
(d)(6)(i)(A) of this section with each completion of a product development
other and selecting the earlier date; or protocol was initially submitted under
(ii) If a major health or environ- section 515(f)(5) of the Act and ending
mental effects test was initiated or a on the date the protocol was declared
petition for a regulation or application completed under section 515(f)(6) of the
for registration was submitted by Sep- Act.
tember 24, 1984, and the commercial (d) The term of the patent as ex-
marketing or use of the product was tended for a medical device will be de-
not approved before September 24, 1984, termined by—
by— (1) Substracting from the number of
(A) Adding 2 years to the original ex- days determined by the Secretary of
piration date of the patent or earlier Health and Human Services to be in
date set by terminal disclaimer, and the regulatory review period pursuant
(B) By comparing the dates obtained to paragraph (c) of this section:
pursuant to paragraphs (d)(4) and (i) The number of days in the periods
(d)(6)(ii)(A) of this section with each of paragraphs (c)(1) and (c)(2) of this
other and selecting the earlier date. section which were on and before the
date on which the patent issued;
§ 1.777 Calculation of patent term ex- (ii) The number of days in the periods
tension for a medical device. of paragraphs (c)(1) and (c)(2) of this
(a) If a determination is made pursu- section during which it is determined
ant to § 1.750 that a patent for a med- under 35 U.S.C. 156(d)(2)(B) by the Sec-
ical device is eligible for extension, the retary of Health and Human Services
term shall be extended by the time as that applicant did not act with due
calculated in days in the manner indi- diligence;
cated by this section. The patent term (iii) One-half the number of days re-
extension will run from the original ex- maining in the period defined by para-
piration date of the patent or earlier graph (c)(1) of this section after that
date as set by terminal disclaimer period is reduced in accordance with
(§ 1.321). paragraphs (d)(1) (i) and (ii) of this sec-
(b) The term of the patent for a med- tion; half days will be ignored for pur-
ical device will be extended by the poses of subtraction;
length of the regulatory review period (2) By adding the number of days de-
for the product as determined by the termined in paragraph (d)(1) of this sec-
Secretary of Health and Human Serv- tion to the original term of the patent
179
§ 1.778 37 CFR Ch. I (7–1–16 Edition)
as shortened by any terminal dis- term shall be extended by the time as

claimer; calculated in days in the manner indi-
(3) By adding 14 years to the date of cated by this section. The patent term
approval of the application under sec- extension will run from the original ex-
tion 515 of the Federal Food, Drug, and piration date of the patent or any ear-
Cosmetic Act or the date a product de- lier date set by terminal disclaimer
velopment protocol was declared com- (§ 1.321).
pleted under section 515(f)(6) of the Act; (b) The term of the patent for an ani-
(4) By comparing the dates for the mal drug will be extended by the
ends of the periods obtained pursuant length of the regulatory review period
to paragraphs (d)(2) and (d)(3) of this for the drug as determined by the Sec-
section with each other and selecting retary of Health and Human Services,
the earlier date; reduced as appropriate pursuant to
(5) If the original patent was issued paragraphs (d)(1) through (d)(6) of this
after September 24, 1984, section.
(i) By adding 5 years to the original (c) The length of the regulatory re-
expiration date of the patent or earlier view period for an animal drug will be
date set by terminal disclaimer; and determined by the Secretary of Health
(ii) By comparing the dates obtained and Human Services. Under 35 U.S.C.
pursuant to paragraphs (d)(4) and 156(g)(4)(B), it is the sum of—
(d)(5)(i) of this section with each other
(1) The number of days in the period
and selecting the earlier date;
beginning on the earlier of the date a
(6) If the original patent was issued
major health or environmental effects
before September 24, 1984, and
test on the drug was initiated or the
(i) If no clinical investigation on hu-
date an exemption under subsection (j)
mans involving the device was begun or
of section 512 of the Federal Food,
no product development protocol was
Drug, and Cosmetic Act became effec-
submitted under section 515(f)(5) of the
tive for the approved animal drug and
Federal Food, Drug, and Cosmetic Act
ending on the date an application was
before September 24, 1984, by—
initially submitted for such animal
(A) Adding 5 years to the original ex-
drug under section 512 of the Federal
piration date of the patent or earlier
Food, Drug, and Cosmetic Act; and
date set by terminal disclaimer and
(B) By comparing the dates obtained (2) The number of days in the period
pursuant to paragraphs (d)(4) and beginning on the date the application
(d)(6)(i)(A) of this section with each was initially submitted for the ap-
other and selecting the earlier date; or proved animal drug under subsection
(ii) If a clinical investigation on hu- (b) of section 512 of the Federal Food,
mans involving the device was begun or Drug, and Cosmetic Act and ending on
a product development protocol was the date such application was approved
submitted under section 515(f)(5) of the under such section.
Federal Food, Drug, and Cosmetic Act (d) The term of the patent as ex-
before September 24, 1984 and the com- tended for an animal drug will be de-
mercial marketing or use of the prod- termined by—
uct was not approved before September (1) Subtracting from the number of
24, 1984, by days determined by the Secretary of
(A) Adding 2 years to the original ex- Health and Human Services to be in
piration date of the patent or earlier the regulatory review period:
date set by terminal disclaimer, and (i) The number of days in the periods
(B) By comparing the dates obtained of paragraphs (c)(1) and (c)(2) of this
pursuant to paragraphs (d)(4) and section that were on and before the
(d)(6)(ii)(A) of this section with each date on which the patent issued;
other and selecting the earlier date. (ii) The number of days in the periods
of paragraphs (c)(1) and (c)(2) of this
§ 1.778 Calculation of patent term ex- section during which it is determined
tension for an animal drug product. under 35 U.S.C. 156(d)(2)(B) by the Sec-
(a) If a determination is made pursu- retary of Health and Human Services
ant to § 1.750 that a patent for an ani- that applicant did not act with due
mal drug is eligible for extension, the diligence;
180
(iii) One-half the number of days re- (A) Adding 3 years to the original ex-
maining in the period defined by para- piration date of the patent or earlier
graph (c)(1) of this section after that date set by terminal disclaimer, and
period is reduced in accordance with (B) Comparing the dates obtained
paragraphs (d)(1) (i) and (ii) of this sec- pursuant to paragraphs (d)(4) and
tion; half days will be ignored for pur- (d)(6)(ii)(A) of this section with each
poses of subtraction; other and selecting the earlier date.
(2) By adding the number of days de- [54 FR 30381, July 20, 1989]
termined in paragraph (d)(1) of this sec-
tion to the original term of the patent § 1.779 Calculation of patent term ex-
as shortened by any terminal dis- tension for a veterinary biological
claimer; product.
(3) By adding 14 years to the date of (a) If a determination is made pursu-
approval of the application under sec- ant to § 1.750 that a patent for a veteri-
tion 512 of the Federal Food, Drug, and nary biological product is eligible for
Cosmetic Act; extension, the term shall be extended
(4) By comparing the dates for the by the time as calculated in days in the
ends of the periods obtained pursuant manner indicated by this section. The
to paragraphs (d)(2) and (d)(3) of this patent term extension will run from
section with each other and selecting the original expiration date of the pat-
the earlier date; ent or any earlier date set by terminal
(5) If the original patent was issued disclaimer (§ 1.321).
after November 16, 1988, by— (b) The term of the patent for a vet-
(i) Adding 5 years to the original ex- erinary biological product will be ex-
piration date of the patent or any ear- tended by the length of the regulatory
lier date set by terminal disclaimer; review period for the product as deter-
and mined by the Secretary of Agriculture,
(ii) Comparing the dates obtained reduced as appropriate pursuant to
pursuant to paragraphs (d)(4) and paragraphs (d)(1) through (d)(6) of this
(d)(5)(i) of this section with each other section.
and selecting the earlier date; (c) The length of the regulatory re-
view period for a veterinary biological
(6) If the original patent was issued
product will be determined by the Sec-
before November 16, 1988, and
retary of Agriculture. Under 35 U.S.C.
(i) If no major health or environ- 156(g)(5)(B), it is the sum of—
mental effects test on the drug was ini-
(1) The number of days in the period
tiated and no request was submitted
beginning on the date the authority to
for an exemption under subsection (j) prepare an experimental biological
of section 512 of the Federal Food, product under the Virus-Serum-Toxin
Drug, and Cosmetic Act before Novem- Act became effective and ending on the
ber 16, 1988, by— date an application for a license was
(A) Adding 5 years to the original ex- submitted under the Virus-Serum-
piration date of the patent or earlier Toxin Act; and
date set by terminal disclaimer; and (2) The number of days in the period
(B) Comparing the dates obtained beginning on the date an application
pursuant to paragraphs (d)(4) and for a license was initially submitted
(d)(6)(i)(A) of this section with each for approval under the Virus-Serum-
other and selecting the earlier date; or Toxin Act and ending on the date such
(ii) If a major health or environ- license was issued.
mental effects test was initiated or a (d) The term of the patent as ex-
request for an exemption under sub- tended for a veterinary biological prod-
section (j) of section 512 of the Federal uct will be determined by—
Food, Drug, and Cosmetic Act was sub- (1) Subtracting from the number of
mitted before November 16, 1988, and days determined by the Secretary of
the application for commercial mar- Agriculture to be in the regulatory re-
keting or use of the animal drug was view period:
not approved before November 16, 1988, (i) The number of days in the periods
by— of paragraphs (c)(1) and (c)(2) of this
181
§ 1.780 37 CFR Ch. I (7–1–16 Edition)
section that were on and before the (A) Adding 3 years to the original ex-
date on which the patent issued; piration date of the patent or earlier
(ii) The number of days in the periods date set by terminal disclaimer; and
of paragraphs (c)(1) and (c)(2) of this (B) Comparing the dates obtained
section during which it is determined pursuant to paragraphs (d)(4) and
under 35 U.S.C. 156(d)(2)(B) by the Sec- (d)(6)(ii)(A) of this section with each
retary of Agriculture that applicant other and selecting the earlier date.
did not act with due diligence; [52 FR 9394, Mar. 24, 1987, as amended at 54
(iii) One-half the number of days re- FR 30382, July 20, 1989]
maining in the period defined by para-
graph (c)(1) of this section after that § 1.780 Certificate or order of exten-
period is reduced in accordance with sion of patent term.
paragraphs (d)(1) (i) and (ii) of this sec- If a determination is made pursuant
tion; half days will be ignored for pur- to § 1.750 that a patent is eligible for ex-
poses of subtraction; tension and that the term of the patent
(2) By adding the number of days de- is to be extended, a certificate of ex-
termined in paragraph (d)(1) of this sec- tension, under seal, or an order grant-
tion to the original term of the patent ing interim extension under 35 U.S.C.
as shortened by any terminal dis- 156(d)(5), will be issued to the applicant
claimer; for the extension of the patent term.
(3) By adding 14 years to the date of Such certificate or order will be re-
the issuance of a license under the corded in the official file of the patent
Virus-Serum-Toxin Act; and will be considered as part of the
(4) By comparing the dates for the original patent. Notification of the
ends of the periods obtained pursuant issuance of the certificate or order of
to paragraphs (d)(2) and (d)(3) of this extension will be published in the Offi-
section with each other and selecting cial Gazette of the United States Patent
the earlier date; and Trademark Office. Notification of
(5) If the original patent was issued the issuance of the order granting an
after November 16, 1988, by— interim extension under 35 U.S.C.
(i) Adding 5 years to the original ex- 156(d)(5), including the identity of the
piration date of the patent or any ear- product currently under regulatory re-
lier date set by terminal disclaimer; view, will be published in the Official
and Gazette of the United States Patent and
(ii) Comparing the dates obtained Trademark Office and in the FEDERAL
pursuant to paragraphs (d)(4) and REGISTER. No certificate of, or order
(d)(5)(i) of this section with each other granting, an extension will be issued if
and selecting the earlier date; the term of the patent cannot be ex-
(6) If the original patent was issued tended, even though the patent is oth-
before November 16, 1988, and erwise determined to be eligible for ex-
(i) If no request for the authority to tension. In such situations, the final
prepare an experimental biological determination made pursuant to § 1.750
product under the Virus-Serum-Toxin will indicate that no certificate or
Act was submitted before November 16, order will issue.
1988, by— [65 FR 54680, Sept. 8, 2000]
(A) Adding 5 years to the original ex-
piration date of the patent or earlier § 1.785 Multiple applications for exten-
date set by terminal disclaimer; and sion of term of the same patent or
(B) Comparing the dates obtained of different patents for the same
pursuant to paragraphs (d)(4) and regulatory review period for a
(d)(6)(i)(A) of this section with each product.
other and selecting the earlier date; or (a) Only one patent may be extended
(ii) If a request for the authority to for a regulatory review period for any
prepare an experimental biological product (§ 1.720(h)). If more than one
product under the Virus-Serum-Toxin application for extension of the same
Act was submitted before November 16, patent is filed, the certificate of exten-
1988, and the commercial marketing or sion of patent term, if appropriate, will
use of the product was not approved be- be issued based upon the first filed ap-
fore November 16, 1988, by— plication for extension.
182
(b) If more than one application for § 1.790 Interim extension of patent
extension is filed by a single applicant term under 35 U.S.C. 156(d)(5).
which seeks the extension of the term (a) An owner of record of a patent or
of two or more patents based upon the its agent who reasonably expects that
same regulatory review period, and the the applicable regulatory review period
patents are otherwise eligible for ex- described in paragraph (1)(B)(ii),
tension pursuant to the requirements (2)(B)(ii), (3)(B)(ii), (4)(B)(ii), or
of this subpart, in the absence of an (5)(B)(ii) of subsection (g) that began
election by the applicant, the certifi- for a product that is the subject of such
cate of extension of patent term, if ap- patent may extend beyond the expira-
propriate, will be issued upon the appli- tion of the patent term in effect may
cation for extension of the patent term submit one or more applications for in-
having the earliest date of issuance of terim extensions for periods of up to
those patents for which extension is one year each. The initial application
sought. for interim extension must be filed dur-
(c) If an application for extension is ing the period beginning 6 months and
filed which seeks the extension of the ending 15 days before the patent term
term of a patent based upon the same is due to expire. Each subsequent appli-
regulatory review period as that relied cation for interim extension must be
upon in one or more applications for filed during the period beginning 60
extension pursuant to the require- days before and ending 30 days before
ments of this subpart, the certificate of the expiration of the preceding interim
extension of patent term will be issued extension. In no event will the interim
on the application only if the patent extensions granted under this section
owner or its agent is the holder of the be longer than the maximum period of
regulatory approval granted with re- extension to which the applicant would
spect to the regulatory review period. be entitled under 35 U.S.C. 156(c).
(d) An application for extension shall (b) A complete application for in-
be considered complete and formal re- terim extension under this section
gardless of whether it contains the shall include all of the information re-
identification of the holder of the regu- quired for a formal application under
latory approval granted with respect to § 1.740 and a complete application under
the regulatory review period. When an § 1.741. Sections (a)(1), (a)(2), (a)(4), and
application contains such information, (a)(6)–(a)(17) of § 1.740 and § 1.741 shall be
or is amended to contain such informa- read in the context of a product cur-
tion, it will be considered in deter- rently undergoing regulatory review.
mining whether an application is eligi- Sections (a)(3) and (a)(5) of § 1.740 are
ble for an extension under this section. not applicable to an application for in-
A request may be made of any appli- terim extension under this section.
cant to supply such information within (c) The content of each subsequent
a non-extendable period of not less interim extension application may be
than one month whenever multiple ap- limited to a request for a subsequent
plications for extension of more than interim extension along with a state-
one patent are received and rely upon ment that the regulatory review period
the same regulatory review period. has not been completed along with any
Failure to provide such information materials or information required
within the period for reply set shall be under §§ 1.740 and 1.741 that are not
regarded as conclusively establishing present in the preceding interim exten-
that the applicant is not the holder of sion application.
the regulatory approval.
[60 FR 25619, May 12, 1995]
(e) Determinations made under this
section shall be included in the notice § 1.791 Termination of interim exten-
of final determination of eligibility for sion granted prior to regulatory ap-
extension of the patent term pursuant proval of a product for commercial
to § 1.750 and shall be regarded as part marketing or use.
of that determination. Any interim extension granted under
[60 FR 25618, May 12, 1995, as amended at 62 35 U.S.C. 156(d)(5) terminates at the end
FR 53201, Oct. 10, 1997] of the 60-day period beginning on the
183
§ 1.801 37 CFR Ch. I (7–1–16 Edition)
date on which the product involved re- perimentation. Once deposited in a de-
ceives permission for commercial mar- pository complying with these regula-
keting or use. If within that 60-day pe- tions, a biological material will be con-
riod the patent owner or its agent files sidered to be readily available even
an application for extension under though some requirement of law or reg-
§§ 1.740 and 1.741 including any addi- ulation of the United States or of the
tional information required under 35 country in which the depository insti-
U.S.C. 156(d)(1) not contained in the ap- tution is located permits access to the
plication for interim extension, the material only under conditions im-
patent shall be further extended in ac- posed for safety, public health or simi-
cordance with the provisions of 35 lar reasons.
U.S.C. 156. (c) The reference to a biological ma-
[60 FR 25619, May 12, 1995] terial in a specification disclosure or
the actual deposit of such material by
Subpart G—Biotechnology an applicant or patent owner does not
Invention Disclosures create any presumption that such ma-
terial is necessary to satisfy 35 U.S.C.
DEPOSIT OF BIOLOGICAL MATERIAL 112 or that deposit in accordance with
these regulations is or was required.
SOURCE: 54 FR 34880, Aug. 22, 1989, unless
otherwise noted. § 1.803 Acceptable depository.
§ 1.801 Biological material. (a) A deposit shall be recognized for
the purposes of these regulations if
For the purposes of these regulations
made in
pertaining to the deposit of biological
material for purposes of patents for in- (1) Any International Depositary Au-
ventions under 35 U.S.C. 101, the term thority (IDA) as established under the
biological material shall include mate- Budapest Treaty on the International
rial that is capable of self-replication Recognition of the Deposit of Micro-
either directly or indirectly. Rep- organisms for the Purposes of Patent
resentative examples include bacteria, Procedure, or
fungi including yeast, algae, protozoa, (2) Any other depository recognized
eukaryotic cells, cell lines, to be suitable by the Office. Suitability
hybridomas, plasmids, viruses, plant will be determined by the Director on
tissue cells, lichens and seeds. Viruses, the basis of the administrative and
vectors, cell organelles and other non- technical competence, and agreement
living material existing in and repro- of the depository to comply with the
ducible from a living cell may be de- terms and conditions applicable to de-
posited by deposit of the host cell capa- posits for patent purposes. The Direc-
ble of reproducing the non-living mate- tor may seek the advice of impartial
rial. consultants on the suitability of a de-
pository. The depository must:
§ 1.802 Need or opportunity to make a
deposit. (i) Have a continuous existence;
(ii) Exist independent of the control
(a) Where an invention is, or relies
of the depositor;
on, a biological material, the disclo-
sure may include reference to a deposit (iii) Possess the staff and facilities
of such biological material. sufficient to examine the viability of a
(b) Biological material need not be deposit and store the deposit in a man-
deposited unless access to such mate- ner which ensures that it is kept viable
rial is necessary for the satisfaction of and uncontaminated;
the statutory requirements for patent- (iv) Provide for sufficient safety
ability under 35 U.S.C. 112. If a deposit measures to minimize the risk of los-
is necessary, it shall be acceptable if ing biological material deposited with
made in accordance with these regula- it;
tions. Biological material need not be (v) Be impartial and objective;
deposited, inter alia, if it is known and (vi) Furnish samples of the deposited
readily avaliable to the public or can material in an expeditious and proper

be made or isolated without undue ex- manner; and
184
(vii) Promptly notify depositors of its (b) When the original deposit is made
inability to furnish samples, and the after the effective filing date of an ap-
reasons why. plication for patent, the applicant
(b) A depository seeking status under must promptly submit a statement
paragraph (a)(2) of this section must di- from a person in a position to corrobo-
rect a communication to the Director rate the fact, stating that the biologi-
which shall: cal material which is deposited is a bi-
(1) Indicate the name and address of ological material specifically identified
the depository to which the commu- in the application as filed.
nication relates; [54 FR 34880, Aug. 22, 1989, as amended at 62
(2) Contain detailed information as to FR 53202, Oct. 10, 1997]
the capacity of the depository to com-
ply with the requirements of paragraph § 1.805 Replacement or supplement of
(a)(2) of this section, including infor- deposit.
mation on its legal status, scientific (a) A depositor, after receiving notice
standing, staff and facilities; during the pendency of an application
(3) Indicate that the depository infor patent, application for reissue pat-
tends to be available, for the purposes ent or reexamination proceeding, that
of deposit, to any depositor under these the depository possessing a deposit ei-
same conditions; ther cannot furnish samples thereof or
(4) Where the depository intends to can furnish samples thereof but the de-
accept for deposit only certain kinds of posit has become contaminated or has
biological material, specify such kinds; lost its capability to function as de-
(5) Indicate the amount of any fees scribed in the specification, shall no-
that the depository will, upon acquir- tify the Office in writing, in each appli-
ing the status of suitable depository cation for patent or patent affected. In
under paragraph (a)(2) of this section, such a case, or where the Office other-
charge for storage, viability state- wise learns, during the pendency of an
ments and furnishings of samples of application for patent, application for
the deposit. reissue patent or reexamination pro-
(c) A depository having status under ceeding, that the depository possessing
paragraph (a)(2) of this section limited a deposit either cannot furnish samples
to certain kinds of biological material thereof or can furnish samples thereof
may extend such status to additional but the deposit has become contami-
kinds of biological material by direct- nated or has lost its capability to func-
ing a communication to the Director in tion as described in the specification,
accordance with paragraph (b) of this the need for making a replacement or
section. If a previous communication supplemental deposit will be governed
under paragraph (b) of this section is of by the same considerations governing
record, items in common with the pre- the need for making an original deposit
vious communication may be incor- under the provisions set forth in
porated by reference. § 1.802(b). A replacement or supple-
(d) Once a depository is recognized to mental deposit made during the pend-
be suitable by the Director or has de- ency of an application for patent shall
faulted or discontinued its performance not be accepted unless it meets the re-
under this section, notice thereof will quirements for making an original de-
be published in the Office Gazette of posit under these regulations, includ-
the Patent and Trademark Office. ing the requirement set forth under
§ 1.804(b). A replacement or supple-
§ 1.804 Time of making an original de- mental deposit made in connection
posit. with a patent, whether or not made
(a) Whenever a biological material is during the pendency of an application
specifically identified in an application for reissue patent or a reexamination
for patent as filed, an original deposit proceeding or both, shall not be accept-
thereof may be made at any time be- ed unless a certificate of correction
fore filing the application for patent under § 1.323 is requested by the patent
or, subject to § 1.809, during pendency owner which meets the terms of para-
of the application for patent. graphs (b) and (c) of this section.
185
§ 1.806 37 CFR Ch. I (7–1–16 Edition)
(b) A request for certificate of correction of identity between the original
tion under this section shall not be and the replacement deposit where a
granted unless the certificate identi- patent making reference to the deposit
fies: is relied upon during any Office
(1) The accession number for the re- proceeeding.
placement or supplemental deposit; (f) A replacement or supplement de-
(2) The date of the deposit; and posit made during the pendency of an
(3) The name and address of the de- application for patent may be made for
pository. any reason.
(c) A request for a certificate of cor- (g) In no case is a replacement or
rection under this section shall not be supplemental deposit of a biological
granted unless the request is made material necessary where the biologi-
promptly after the replacement or sup- cal material, in accordance with
plemental deposit has been made and § 1.802(b), need not be deposited.
the request: (h) No replacement deposit of a bio-
(1) Includes a statement of the reason logical material is necessary where a
for making the replacement or supple- depository can furnish samples thereof
mental deposit; but the depository for national secu-
(2) Includes a statement from a per- rity, health or environmental safety
son in a position to corroborate the reasons is unable to provide samples to
fact, and stating that the replacement requesters outside of the jurisdiction
or supplemental deposit is of a biologi- where the depository is located.
cal material which is identical to that (i) The Office will not recognize in
originally deposited; any Office proceeding a replacement
(3) Includes a showing that the pat- deposit of a biological material made
ent owner acted diligently— by a patent owner where the depository
(i) In the case of a replacement de- could furnish samples of the deposit
posit, in making the deposit after re- being replaced.
ceiving notice that samples could no
longer be furnished from an earlier de- [54 FR 34880, Aug. 22, 1989, as amended at 62
FR 53202, Oct. 10, 1997]
posit; or
(ii) In the case of a supplemental de- § 1.806 Term of deposit.
posit, in making the deposit after re-
ceiving notice that the earlier deposit A deposit made before or during
had become contaminated or had lost pendency of an application for patent
its capability to function as described shall be made for a term of at least
in the specification; thirty (30) years and at least five (5)
(4) Includes a statement that the years after the most recent request for
term of the replacement or supple- the furnishing of a sample of the de-
mental deposit expires no earlier than posit was received by the depository. In
the term of the deposit being replaced any case, samples must be stored under
or supplemented; and agreements that would make them
(5) Otherwise establishes compliance available beyond the enforceable life of
with these regulations. the patent for which the deposit was
(d) A depositor’s failure to replace a made.
deposit, or in the case of a patent, to
diligently replace a deposit and § 1.807 Viability of deposit.
promptly thereafter request a certifi- (a) A deposit of biological material
cate of correction which meets the that is capable of self-replication ei-
terms of paragraphs (b) and (c) of this ther directly or indirectly must be via-
section, after being notified that the ble at the time of deposit and during
depository possessing the deposit can- the term of deposit. Viability may be
not furnish samples thereof, shall tested by the depository. The test must
cause the application or patent in- conclude only that the deposited mate-
volved to be treated in any Office pro- rial is capable of reproduction. No evi-
ceeding as if no deposit were made. dence is necessarily required regarding
(e) In the event a deposit is replaced the ability of the deposited material to
according to these regulations, the Of- perform any function described in the
fice will apply a rebuttable presump- patent application.
186
(b) A viability statement for each de- (3) Is communicated in writing by the
posit of a biological material defined in depository to the depositor along with
paragraph (a) of this section not made the date on which the sample was fur-
under the Budapest Treaty on the nished and the name and address of the
International Recognition of the De- party to whom the sample was fur-
posit of Microorganisms for the Pur- nished.
poses of Patent Procedure must be filed (c) Upon request made to the Office,
in the application and must contain: the Office will certify whether a de-
(1) The name and address of the deposit has been stated to have been
pository; made under conditions which make it
(2) The name and address of the de- available to the public as of the issue
positor; date of the patent grant provided the
(3) The date of deposit; request contains:
(4) The identity of the deposit and (1) The name and address of the de-
the accession number given by the depository;
pository; (2) The accession number given to the
(5) The date of the viability test; deposit;
(6) The procedures used to obtain a (3) The patent number and issue date
sample if the test is not done by the de- of the patent referring to the deposit;
pository; and and
(7) A statement that the deposit is (4) The name and address of the re-
capable of reproduction. questing party.
(c) If a viability test indicates that
the deposit is not viable upon receipt, § 1.809 Examination procedures.
or the examiner cannot, for scientific (a) The examiner shall determine
or other valid reasons, accept the pursuant to § 1.104 in each application
statement of viability received from for patent, application for reissue pat-
the applicant, the examiner shall pro- ent or reexamination proceeding if a
ceed as if no deposit has been made. deposit is needed, and if needed, if a de-
The examiner will accept the conclu- posit actually made is acceptable for
sion set forth in a viability statement patent purposes. If a deposit is needed
issued by a depository recognized under and has not been made or replaced or
§ 1.803(a). supplemented in accordance with these
regulations, the examiner, where ap-
§ 1.808 Furnishing of samples. propriate, shall reject the affected
(a) A deposit must be made under claims under the appropriate provision
conditions that assure that: of 35 U.S.C. 112, explaining why a de-
(1) Access to the deposit will be avail- posit is needed and/or why a deposit ac-
able during pendency of the patent ap- tually made cannot be accepted.
plication making reference to the de- (b) The applicant for patent or patent
posit to one determined by the Direc- owner shall reply to a rejection under
tor to be entitled thereto under § 1.14 paragraph (a) of this section by—
and 35 U.S.C. 122, and (1) In the case of an applicant for pat-
(2) Subject to paragraph (b) of this ent, either making an acceptable origi-
section, all restrictions imposed by the nal, replacement, or supplemental de-
depositor on the availability to the posit, or assuring the Office in writing
public of the deposited material will be that an acceptable deposit will be
irrevocably removed upon the granting made; or, in the case of a patent owner,
of the patent. requesting a certificate of correction of
(b) The depositor may contract with the patent which meets the terms of
the depository to require that samples paragraphs (b) and (c) of § 1.805, or
of a deposited biological material shall (2) Arguing why a deposit is not need-
be furnished only if a request for a ed under the circumstances of the ap-
sample, during the term of the patent: plication or patent considered and/or
(1) Is in writing or other tangible why a deposit actually made should be
form and dated; accepted. Other replies to the exam-
(2) Contains the name and address of iner’s action shall be considered non-
the requesting party and the accession responsive. The rejection will be re-
number of the deposit; and peated until either paragraph (b)(1) of
187
§ 1.821 37 CFR Ch. I (7–1–16 Edition)
this section is satisfied or the examiner other than ‘‘n’’defined in accordance

is convinced that a deposit is not need- with the World Intellectual Property
ed. Organization (WIPO) Handbook on In-
(c) If an application for patent is oth- dustrial Property Information and Doc-
erwise in condition for allowance ex- umentation, Standard ST.25: Standard
cept for a needed deposit and the Office for the Presentation of Nucleotide and
has received a written assurance that Amino Acid Sequence Listings in Pat-
an acceptable deposit will be made, the ent Applications (1998), including Ta-
Office may notify the applicant in a no- bles 1 through 6 in Appendix 2, herein
tice of allowability and set a three- incorporated by reference. (Hereinafter
month period of time from the mailing ‘‘WIPO Standard ST.25 (1998)’’). This
date of the notice of allowability with- incorporation by reference was ap-
in which the deposit must be made in proved by the Director of the Federal
order to avoid abandonment. This time Register in accordance with 5 U.S.C.
period is not extendable under § 1.136 552(a) and 1 CFR part 51. Copies of
(see § 1.136(c)). WIPO Standard ST.25 (1998) may be ob-
(d) For each deposit made pursuant tained from the World Intellectual
to these regulations, the specification Property Organization; 34 chemin des
shall contain: Colombettes; 1211 Geneva 20 Switzer-
(1) The accession number for the de- land. Copies may also be inspected at
posit; the National Archives and Records Ad-
(2) The date of the deposit; ministration (NARA). For information
(3) A description of the deposited bio- on the availability of this material at
logical material sufficient to specifi- NARA, call 202–741–6030, or go to: http://
cally identify it and to permit exam- www.archives.gov/federallregister/
ination; and codeloflfederallregulations/
(4) The name and address of the de- ibrllocations.html. Nucleotides and
pository. amino acids are further defined as fol-
(e) Any amendment required by para- lows:
graphs (d)(1), (d)(2) or (d)(4) of this sec- (1) Nucleotides: Nucleotides are in-
tion must be filed before or with the tended to embrace only those nucleo-
payment of the issue fee (see § 1.312). tides that can be represented using the
[54 FR 34880, Aug. 22, 1989, as amended at 66 symbols set forth in WIPO Standard
FR 21092, Apr. 27, 2001; 78 FR 62408, Oct. 21, ST.25 (1998), Appendix 2, Table 1. Modi-
2013] fications, e.g., methylated bases, may
be described as set forth in WIPO
APPLICATION DISCLOSURES CONTAINING
Standard ST.25 (1998), Appendix 2,
NUCLEOTIDE AND/OR AMINO ACID SE-
Table 2, but shall not be shown explic-
QUENCES
itly in the nucleotide sequence.
(2) Amino acids: Amino acids are
SOURCE: Sections 1.821 through 1.825 appear
at 55 FR 18245, May 1, 1990, unless otherwise those L-amino acids commonly found
noted. in naturally occurring proteins and are
listed in WIPO Standard ST.25 (1998),
§ 1.821 Nucleotide and/or amino acid Appendix 2, Table 3. Those amino acid
sequence disclosures in patent ap- sequences containing D-amino acids
plications. are not intended to be embraced by
(a) Nucleotide and/or amino acid se- this definition. Any amino acid se-
quences as used in §§ 1.821 through 1.825 quence that contains post-
are interpreted to mean an unbranched translationally modified amino acids
sequence of four or more amino acids may be described as the amino acid se-
or an unbranched sequence of ten or quence that is initially translated
more nucleotides. Branched sequences using the symbols shown in WIPO
are specifically excluded from this defi- Standard ST.25 (1998), Appendix 2,
nition. Sequences with fewer than four Table 3 with the modified positions;
specifically defined nucleotides or e.g., hydroxylations or glycosylations,
amino acids are specifically excluded being described as set forth in WIPO
from this section. ‘‘Specifically de- Standard ST.25 (1998), Appendix 2,
fined’’ means those amino acids other Table 4, but these modifications shall
than ‘‘Xaa’’ and those nucleotide bases not be shown explicitly in the amino
188
acid sequence. Any peptide or protein ance with the requirements of § 1.824.
that can be expressed as a sequence The computer readable form must be a
using the symbols in WIPO Standard copy of the ‘‘Sequence Listing’’ and
ST.25 (1998), Appendix 2, Table 3 in con- may not be retained as a part of the
junction with a description in the Fea- patent application file. If the computer
ture section to describe, for example, readable form of a new application is to
modified linkages, cross links and end be identical with the computer read-
caps, non-peptidyl bonds, etc., is em- able form of another application of the
braced by this definition. applicant on file in the Office, ref-
(b) Patent applications which contain erence may be made to the other appli-
disclosures of nucleotide and/or amino cation and computer readable form in
acid sequences, in accordance with the lieu of filing a duplicate computer
definition in paragraph (a) of this sec- readable form in the new application if
tion, shall, with regard to the manner the computer readable form in the
in which the nucleotide and/or amino other application was compliant with
acid sequences are presented and de- all of the requirements of this subpart.
scribed, conform exclusively to the re- The new application must be accom-
quirements of §§ 1.821 through 1.825. panied by a letter making such ref-
(c) Patent applications which contain erence to the other application and
disclosures of nucleotide and/or amino computer readable form, both of which
acid sequences must contain, as a sepa- shall be completely identified. In the
rate part of the disclosure, a paper or new application, applicant must also
compact disc copy (see § 1.52(e)) dis-
request the use of the compliant com-
closing the nucleotide and/or amino
puter readable ‘‘Sequence Listing’’
acid sequences and associated informa-
that is already on file for the other ap-
tion using the symbols and format in
plication and must state that the paper
accordance with the requirements of
or compact disc copy of the ‘‘Sequence
§§ 1.822 and 1.823. This paper or compact
Listing’’ in the new application is iden-
disc copy is referred to elsewhere in
tical to the computer readable copy
this subpart as the ‘‘Sequence List-
filed for the other application.
ing.’’ Each sequence disclosed must ap-
pear separately in the ‘‘Sequence List- (f) In addition to the paper or com-
ing.’’ Each sequence set forth in the pact disc copy required by paragraph
‘‘Sequence Listing’’ must be assigned a (c) of this section and the computer
separate sequence identifier. The se- readable form required by paragraph
quence identifiers must begin with 1 (e) of this section, a statement that the
and increase sequentially by integers. ‘‘Sequence Listing’’ content of the
If no sequence is present for a sequence paper or compact disc copy and the
identifier, the code ‘‘000’’ must be used computer readable copy are the same
in place of the sequence. The response must be submitted with the computer
for the numeric identifier <160>must readable form, e.g., a statement that
include the total number of SEQ ID ‘‘the sequence listing information re-
NOs, whether followed by a sequence or corded in computer readable form is
by the code ‘‘000.’’ identical to the written (on paper or
(d) Where the description or claims of compact disc) sequence listing.’’
a patent application discuss a sequence (g) If any of the requirements of
that is set forth in the ‘‘Sequence List- paragraphs (b) through (f) of this sec-
ing’’ in accordance with paragraph (c) tion are not satisfied at the time of fil-
of this section, reference must be made ing under 35 U.S.C. 111(a) or at the time
to the sequence by use of the sequence of entering the national stage under 35
identifier, preceded by ‘‘SEQ ID NO:’’ U.S.C. 371, applicant will be notified
in the text of the description or claims, and given a period of time within
even if the sequence is also embedded which to comply with such require-
in the text of the description or claims ments in order to prevent abandon-
of the patent application. ment of the application. Any submis-
(e) A copy of the ‘‘Sequence Listing’’ sion in reply to a requirement under
referred to in paragraph (c) of this sec- this paragraph must be accompanied
tion must also be submitted in com- by a statement that the submission in-
puter readable form (CRF) in accord- cludes no new matter.
189
§ 1.822 37 CFR Ch. I (7–1–16 Edition)
(h) If any of the requirements of this material at NARA, call 202–741–

paragraphs (b) through (f) of this sec- 6030, or go to: http://www.archives.gov/
tion are not satisfied at the time of fil- federallregister/
ing an international application under codeloflfederallregulations/
the Patent Cooperation Treaty (PCT), ibrllocations.html. No code other than
which application is to be searched by that specified in these sections shall be
the United States International used in nucleotide and amino acid se-
Searching Authority or examined by quences. A modified base or modified
the United States International Pre- or unusual amino acid may be pre-
liminary Examining Authority, appli- sented in a given sequence as the cor-
cant will be sent a notice necessitating responding unmodified base or amino
compliance with the requirements acid if the modified base or modified or
within a prescribed time period. Any unusual amino acid is one of those list-
submission in reply to a requirement ed in WIPO Standard ST.25 (1998), Ap-
under this paragraph must be accom- pendix 2, Tables 2 and 4, and the modi-
panied by a statement that the submis- fication is also set forth in the Feature
sion does not include matter which section. Otherwise, each occurrence of
goes beyond the disclosure in the inter- a base or amino acid not appearing in
national application as filed. If appli- WIPO Standard ST.25 (1998), Appendix
cant fails to timely provide the re- 2, Tables 1 and 3, shall be listed in a
quired computer readable form, the given sequence as ‘‘n’’ or ‘‘Xaa,’’ re-
United States International Searching spectively, with further information,
Authority shall search only to the ex- as appropriate, given in the Feature
tent that a meaningful search can be section, preferably by including one or
performed without the computer read- more feature keys listed in WIPO
able form and the United States Inter- Standard ST.25 (1998), Appendix 2, Ta-
national Preliminary Examining Au- bles 5 and 6.
thority shall examine only to the ex-
(c) Format representation of nucleo-
tent that a meaningful examination
tides. (1) A nucleotide sequence shall be
can be performed without the computer
listed using the lower-case letter for
readable form.
representing the one-letter code for the
[63 FR 29634, June 1, 1998, as amended at 65 nucleotide bases set forth in WIPO
FR 54680, Sept. 8, 2000; 69 FR 18803, Apr. 9, Standard ST.25 (1998), Appendix 2,
2004; 70 FR 10489, Mar. 4, 2005] Table 1.
§ 1.822 Symbols and format to be used (2) The bases in a nucleotide sequence
for nucleotide and/or amino acid se- (including introns) shall be listed in
quence data. groups of 10 bases except in the coding
(a) The symbols and format to be parts of the sequence. Leftover bases,
used for nucleotide and/or amino acid fewer than 10 in number, at the end of
sequence data shall conform to the re- noncoding parts of a sequence shall be
quirements of paragraphs (b) through grouped together and separated from
(e) of this section. adjacent groups of 10 or 3 bases by a
(b) The code for representing the nu- space.
cleotide and/or amino acid sequence (3) The bases in the coding parts of a
characters shall conform to the code nucleotide sequence shall be listed as
set forth in the tables in WIPO Stand- triplets (codons). The amino acids cor-
ard ST.25 (1998), Appendix 2, Tables 1 responding to the codons in the coding
and 3. This incorporation by reference parts of a nucleotide sequence shall be
was approved by the Director of the typed immediately below the cor-
Federal Register in accordance with 5 responding codons. Where a codon
U.S.C. 552(a) and 1 CFR part 51. Copies spans an intron, the amino acid symbol
of ST.25 may be obtained from the shall be typed below the portion of the
World Intellectual Property Organiza- codon containing two nucleotides.
tion; 34 chemin des Colombettes; 1211 (4) A nucleotide sequence shall be
Geneva 20 Switzerland. Copies may also listed with a maximum of 16 codons or
be inspected at the National Archives 60 bases per line, with a space provided
and Records Administration (NARA). between each codon or group of 10

For information on the availability of bases.
190
(5) A nucleotide sequence shall be (5) An amino acid sequence that con-
presented, only by a single strand, in tains internal terminator symbols
the 5 to 3 direction, from left to right. (e.g., ‘‘Ter’’, ‘‘*’’, or ‘‘.’’, etc.) may not
(6) The enumeration of nucleotide be represented as a single amino acid
bases shall start at the first base of the sequence, but shall be presented as sep-
sequence with number 1. The enumera- arate amino acid sequences.
tion shall be continuous through the (e) A sequence with a gap or gaps
whole sequence in the direction 5 to 3. shall be presented as a plurality of sep-
The enumeration shall be marked in arate sequences, with separate se-
the right margin, next to the line con- quence identifiers, with the number of
taining the one-letter codes for the separate sequences being equal in num-
bases, and giving the number of the ber to the number of continuous
last base of that line. strings of sequence data. A sequence
(7) For those nucleotide sequences that is made up of one or more non-
that are circular in configuration, the contiguous segments of a larger se-
enumeration method set forth in para- quence or segments from different se-
graph (c)(6) of this section remains ap- quences shall be presented as a sepa-
plicable with the exception that the rate sequence.
designation of the first base of the nu- [63 FR 29635, June 1, 1998, as amended at 69
cleotide sequence may be made at the FR 18803, Apr. 9, 2004; 70 FR 10489, Mar. 4,
option of the applicant. 2005]
(d) Representation of amino acids. (1)
The amino acids in a protein or peptide § 1.823 Requirements for nucleotide
sequence shall be listed using the and/or amino acid sequences as
three-letter abbreviation with the first part of the application.
letter as an upper case character, as in (a)(1) If the ‘‘Sequence Listing’’ re-
WIPO Standard ST.25 (1998), Appendix quired by § 1.821(c) is submitted on
2, Table 3. paper: The ‘‘Sequence Listing,’’ setting
(2) A protein or peptide sequence forth the nucleotide and/or amino acid
shall be listed with a maximum of 16 sequence and associated information in
amino acids per line, with a space pro- accordance with paragraph (b) of this
vided between each amino acid. section, must begin on a new page and
(3) An amino acid sequence shall be must be titled ‘‘Sequence Listing.’’ The
presented in the amino to carboxy di- pages of the ‘‘Sequence Listing’’ pref-
rection, from left to right, and the erably should be numbered independ-
amino and carboxy groups shall not be ently of the numbering of the remain-
presented in the sequence. der of the application. Each page of the
(4) The enumeration of amino acids ‘‘Sequence Listing’’ shall contain no
may start at the first amino acid of the more than 66 lines and each line shall
first mature protein, with the number contain no more than 72 characters.
1. When presented, the amino acids pre- The sheet or sheets presenting a se-
ceding the mature protein, e.g., pre-sequence listing may not include mate-
quences, pro-sequences, pre-pro-serial other than part of the sequence
quences and signal sequences, shall listing. A fixed-width font should be
have negative numbers, counting back- used exclusively throughout the ‘‘Se-
wards starting with the amino acid quence Listing.’’
next to number 1. Otherwise, the enu- (2) If the ‘‘Sequence Listing’’ re-
meration of amino acids shall start at quired by § 1.821(c) is submitted on
the first amino acid at the amino ter- compact disc: The ‘‘Sequence Listing’’
minal as number 1. It shall be marked must be submitted on a compact disc
below the sequence every 5 amino in compliance with § 1.52(e). The com-
acids. The enumeration method for pact disc may also contain table infor-
amino acid sequences that is set forth mation if the application contains
in this section remains applicable for table information that may be sub-
amino acid sequences that are circular mitted on a compact disc
in configuration, with the exception (§ 1.52(e)(1)(iii)). The specification must
that the designation of the first amino contain an incorporation-by-reference
acid of the sequence may be made at of the Sequence Listing as required by

the option of the applicant. § 1.52(e)(5). The presentation of the
191
§ 1.823 37 CFR Ch. I (7–1–16 Edition)
‘‘Sequence Listing’’ and other mate- tion in the ‘‘Sequence Listing’’ shall
rials on compact disc under § 1.821(c) conform to the arrangement given
does not substitute for the Computer below. Each item of information shall
Readable Form that must be submitted begin on a new line and shall begin
on disk, compact disc, or tape in ac- with the numeric identifier enclosed in
cordance with § 1.824. angle brackets as shown. The submis-
(b) The ‘‘Sequence Listing’’ shall, ex- sion of those items of information des-
cept as otherwise indicated, include the ignated with an ‘‘M’’ is mandatory.
actual nucleotide and/or amino acid se- The submission of those items of infor-
quence, the numeric identifiers and mation designated with an ‘‘O’’ is op-
their accompanying information as tional. Numeric identifiers
shown in the following table. The nu- <110>through <170>shall only be set
meric identifier shall be used only in forth at the beginning of the ‘‘Se-
the ‘‘Sequence Listing.’’ The order and quence Listing.’’ The following table il-
presentation of the items of informa- lustrates the numeric identifiers.
Numeric identifier Definition Comments and format Mandatory (M) or optional (O).
<110> ................... Applicant ................. Preferably max. of 10 names; one name M.

per line; preferable format: Surname,
Other Names and/or Initials.
<120> ................... Title of Invention ..... .................................................................. M.
<130> ................... File Reference ........ Personal file reference ............................ M when filed prior to assignment of appl.
number.
<140> ................... Current Application Specify as: US 07/999,999 or PCT/ M, if available.
Number. US96/99999.
<141> ................... Current Filing Date Specify as: yyyy-mm-dd .......................... M, if available.
<150> ................... Prior Application Specify as: US 07/999,999 or PCT/ M, if applicable include priority docu-
Number. US96/99999. ments under 35 USC 119 and 120.
<151> ................... Prior Application Fil- Specify as: yyyy-mm-dd .......................... M, if applicable.
ing Date.
<160> ................... Number of SEQ ID Count includes total number of SEQ ID M.
NOs. NOs.
<170> ................... Software ................. Name of software used to create the Se- O.
quence Listing.
<210> ................... SEQ ID NO:#: ......... Response shall be an integer rep- M.
resenting the SEQ ID NO shown.
<211> ................... Length ..................... Respond with an integer expressing the M.
number of bases or amino acid resi-
dues.
<212> ................... Type ........................ Whether presented sequence molecule M.
is DNA, RNA, or PRT (protein). If a
nucleotide sequence contains both
DNA and RNA fragments, the type
shall be ‘‘DNA.’’ In addition, the com-
bined DNA/RNA molecule shall be fur-
ther described in the <220>to
<223>feature section.
<213> ................... Organism ................ Scientific name, i.e., Genus/ species, M
Unknown or Artificial Sequence. In ad-
dition, the ‘‘Unknown’’ or ‘‘Artificial Se-
quence’’ organisms shall be further
described in the <220>to
<223>feature section.
<220> ................... Feature ................... Leave blank after <220>. <221– M, under the following conditions: if ‘‘n,’’
223>provide for a description of points ‘‘Xaa,’’ or a modified or unusual L-
of biological significance in the se- amino acid or modified base was used
quence.. in a sequence; if ORGANISM is ‘‘Arti-
ficial Sequence’’ or ‘‘Unknown’’; if mol-
ecule is combined DNA/RNA’’
<221> ................... Name/Key ............... Provide appropriate identifier for feature, M, under the following conditions: if ‘‘n,’’
preferably from WIPO Standard ST.25 ‘‘Xaa,’’ or a modified or unusual L-
(1998), Appendix 2, Tables 5 and 6. amino acid or modified base was used
in a sequence.
<222> ................... Location .................. Specify location within sequence; where M, under the following conditions: if ‘‘n,’’
appropriate state number of first and ‘‘Xaa,’’ or a modified or unusual L-
last bases/amino acids in feature. amino acid or modified base was used
in a sequence.
192
Numeric identifier Definition Comments and format Mandatory (M) or optional (O).
<223> ................... Other Information ... Other relevant information; four lines M, under the following conditions: if ‘‘n,’’
maximum. ‘‘Xaa,’’ or a modified or unusual L-
amino acid or modified base was used
in a sequence; if ORGANISM is ‘‘Arti-
ficial Sequence’’ or ‘‘Unknown’’; if mol-
ecule is combined DNA/RNA.
<300> ................... Publication Informa- Leave blank after <300> ......................... O.
tion.
<301> ................... Authors ................... Preferably max of ten named authors of O.
publication; specify one name per line;
preferable format: Surname, Other
Names and/or Initials.
<302> ................... Title ......................... .................................................................. O.
<303> ................... Journal .................... .................................................................. O.
<304> ................... Volume ................... .................................................................. O.
<305> ................... Issue ....................... .................................................................. O.
<306> ................... Pages ..................... .................................................................. O.
<307> ................... Date ........................ Journal date on which data published; O.
specify as yyyy-mm-dd, MMM-yyyy or
Season-yyyy.
<308> ................... Database Accession Accession number assigned by data- O.
Number. base including database name.
<309> ................... Database Entry Date of entry in database; specify as O.
Date. yyyy-mm-dd or MMM-yyyy.
<310> ................... Patent Document Document number; for patent-type cita- O.
Number. tions only. Specify as, for example,
US 07/999,999.
<311> ................... Patent Filing Date ... Document filing date, for patent-type ci- O.
tations only; specify as yyyy-mm-dd.
<312> ................... Publication Date ..... Document publication date, for patent- O.
type citations only; specify as yyyy-
mm-dd.
<313> ................... Relevant Residues FROM (position) TO (position) ................ O.
<400> ................... Sequence ............... SEQ ID NO should follow the numeric M.
identifier and should appear on the
line preceding the actual sequence.
[63 FR 29636, June 1, 1998, as amended at 65 FR 54681, Sept. 8, 2000; 68 FR 38630, June 30, 2003]
§ 1.824 Form and format for nucleotide the compressed file is in a self-extract-
and/or amino acid sequence submis- ing format that will decompress on one
sions in computer readable form. of the systems described in paragraph
(a) The computer readable form re- (b) of this section.
quired by § 1.821(e) shall meet the fol- (5) Page numbering must not appear
lowing requirements: within the computer readable form
(1) The computer readable form shall version of the ‘‘Sequence Listing’’ file.
contain a single ‘‘Sequence Listing’’ as (6) All computer readable forms must
either a diskette, series of diskettes, or have a label permanently affixed there-
other permissible media outlined in to on which has been hand-printed or
paragraph (c) of this section. typed: the name of the applicant, the
(2) The ‘‘Sequence Listing’’ in para- title of the invention, the date on
graph (a)(l) of this section shall be sub-
which the data were recorded on the
mitted in American Standard Code for
computer readable form, the operating
Information Interchange (ASCII) text.
system used, a reference number, and
No other formats shall be allowed.
(3) The computer readable form may an application number and filing date,
be created by any means, such as word if known. If multiple diskettes are sub-
processors, nucleotide/amino acid se- mitted, the diskette labels must indi-
quence editors’ or other custom com- cate their order (e.g., ‘‘1 of X’’).
puter programs; however, it shall con- (b) Computer readable form submis-
form to all requirements detailed in sions must meet these format require-
this section. ments:
(4) File compression is acceptable (1) Computer Compatibility: IBM PC/

when using diskette media, so long as XT/AT or Apple Macintosh;
193
§ 1.825 37 CFR Ch. I (7–1–16 Edition)
(2) Operating System Compatibility: ment that the substitute sheets include
MS-DOS, MS-Windows, Unix or Mac- no new matter. Any amendment to a
intosh; compact disc copy of the ‘‘Sequence
(3) Line Terminator: ASCII Carriage Listing’’ (§ 1.821(c)) must be made by
Return plus ASCII Line Feed; and the submission of a replacement com-
(4) Pagination: Continuous file (no pact disc (2 copies) in compliance with
‘‘hard page break’’ codes permitted). § 1.52(e). Amendments must also be ac-
(c) Computer readable form files sub- companied by a statement that indi-
mitted may be in any of the following cates support for the amendment in the
media: application, as filed, and a statement
(1) Diskette: 3.50 inch, 1.44 Mb stor- that the replacement compact disc in-
age; 3.50 inch, 720 Kb storage; 5.25 inch, cludes no new matter.
1.2 Mb storage; 5.25 inch, 360 Kb stor- (b) Any amendment to the paper or
age. compact disc copy of the ‘‘Sequence
(2) Magnetic tape: 0.5 inch, up to Listing,’’ in accordance with paragraph
24000 feet; Density: 1600 or 6250 bits per (a) of this section, must be accom-
inch, 9 track; Format: Unix tar companied by a substitute copy of the com-
mand; specify blocking factor (not puter readable form (§ 1.821(e)) includ-
‘‘block size’’); Line Terminator: ASCII ing all previously submitted data with
Carriage Return plus ASCII Line Feed. the amendment incorporated therein,
(3) 8mm Data Cartridge: Format: accompanied by a statement that the
Unix tar command; specify blocking copy in computer readable form is the
factor (not ‘‘block size’’); Line Termi- same as the substitute copy of the
nator: ASCII Carriage Return plus ‘‘Sequence Listing.’’
ASCII Line Feed. (c) Any appropriate amendments to
(4) Compact disc: Format: ISO 9660 or the ‘‘Sequence Listing’’ in a patent;
High Sierra Format. e.g., by reason of reissue or certificate
(5) Magneto Optical Disk: Size/Stor- of correction, must comply with the re-
age Specifications: 5.25 inch, 640 Mb. quirements of paragraphs (a) and (b) of
(d) Computer readable forms that are this section.
submitted to the Office will not be re- (d) If, upon receipt, the computer
turned to the applicant. readable form is found to be damaged
or unreadable, applicant must provide,
[65 FR 54681, Sept. 8, 2000]
within such time as set by the Direc-
§ 1.825 Amendments to or replacement tor, a substitute copy of the data in
of sequence listing and computer computer readable form accompanied
readable copy thereof. by a statement that the substitute
(a) Any amendment to a paper copy data is identical to that originally
of the ‘‘Sequence Listing’’ (§ 1.821(c)) filed.
must be made by the submission of [63 FR 29638, June 1, 1998, as amended at 65
substitute sheets and include a state- FR 54681, Sept. 8, 2000]
194
U.S. Patent and Trademark Office, Commerce Pt. 1, Subpt. G, App. A
APPENDIX A TO SUBPART G OF PART 1—SAMPLE SEQUENCE LISTING

195
ER01JN98.006</GPH>
Pt. 1, Subpt. G, App. A 37 CFR Ch. I (7–1–16 Edition)
196
ER01JN98.007</GPH>
U.S. Patent and Trademark Office, Commerce Pt. 1, Subpt. G, App. A
197
ER01JN98.008</GPH>
Pt. 1, Subpt. G, App. A 37 CFR Ch. I (7–1–16 Edition)
[63 FR 29639, June 1, 1998]

ER01JN98.010</GPH>
198
ER01JN98.009</GPH>
Subpart H—Inter Partes Reexam- § 1.904 Notice of inter partes reexam-

ination of Patents That Issued ination in Official Gazette.
From an Original Application A notice of the filing of an inter
Filed in the United States on or partes reexamination request will be
After November 29, 1999 published in the Official Gazette. The
notice published in the Official Gazette
under § 1.11(c) will be considered to be
SOURCE: 65 FR 76777, Dec. 7, 2000, unless
otherwise noted. constructive notice of the inter partes
reexamination proceeding and inter
PRIOR ART CITATIONS partes reexamination will proceed.
§ 1.902 Processing of prior art cita- § 1.905 Submission of papers by the

tions during an inter partes reex- public in inter partes reexamina-
amination proceeding. tion.
Citations by the patent owner in ac- Unless specifically provided for, no
cordance with § 1.933 and by an inter submissions on behalf of any third par-
partes reexamination third party re- ties other than third party requesters
quester under § 1.915 or § 1.948 will be as defined in 35 U.S.C. 100(e) will be
entered in the inter partes reexamina- considered unless such submissions are
tion file. The entry in the patent file of in accordance with § 1.915 or entered in
other citations submitted after the the patent file prior to the date of the
date of an order for reexamination pur- order for reexamination pursuant to
suant to § 1.931 by persons other than § 1.931. Submissions by third parties,
the patent owner, or the third party re- other than third party requesters, filed
quester under either § 1.913 or § 1.948, after the date of the order for reexam-
will be delayed until the inter partes re- ination pursuant to § 1.931, must meet
examination proceeding has been con- the requirements of § 1.501 and will be
cluded by the issuance and publication treated in accordance with § 1.902. Sub-
of a reexamination certificate. See missions which do not meet the re-
§ 1.502 for processing of prior art cita- quirements of § 1.501 will be returned.
tions in patent and reexamination files
during an ex parte reexamination pro- § 1.906 Scope of reexamination in inter
ceeding filed under § 1.510. partes reexamination proceeding.
[72 FR 18906, Apr. 16, 2007]

(a) Claims in an inter partes reexam-
ination proceeding will be examined on
REQUIREMENTS FOR Inter Partes the basis of patents or printed publica-
REEXAMINATION PROCEEDINGS tions and, with respect to subject mat-
ter added or deleted in the reexamina-
§ 1.903 Service of papers on parties in tion proceeding, on the basis of the re-
inter partes reexamination. quirements of 35 U.S.C. 112.
The patent owner and the third party (b) Claims in an inter partes reexam-
requester will be sent copies of Office ination proceeding will not be per-
actions issued during the inter partes mitted to enlarge the scope of the
reexamination proceeding. After filing claims of the patent.
of a request for inter partes reexamina- (c) Issues other than those indicated
tion by a third party requester, any in paragraphs (a) and (b) of this section
document filed by either the patent will not be resolved in an inter partes
owner or the third party requester reexamination proceeding. If such
must be served on every other party in issues are raised by the patent owner
the reexamination proceeding in the or the third party requester during a
manner provided in § 1.248. Any docu- reexamination proceeding, the exist-
ment must reflect service or the docu- ence of such issues will be noted by the
ment may be refused consideration by examiner in the next Office action, in
the Office. The failure of the patent which case the patent owner may de-
owner or the third party requester to sire to consider the advisability of fil-
serve documents may result in their ing a reissue application to have such
being refused consideration. issues considered and resolved.
199
§ 1.907 37 CFR Ch. I (7–1–16 Edition)
§ 1.907 Inter partes reexamination pro- filing date, and any such request will
hibited. not be granted.
(a) Once an order to reexamine has [76 FR 59057, Sept. 23, 2011]
been issued under § 1.931, neither the
third party requester, nor its privies, § 1.915 Content of request for inter
may file a subsequent request for inter partes reexamination.
partes reexamination of the patent (a) The request must be accompanied
until an inter partes reexamination cer- by the fee for requesting inter partes re-
tificate is issued under § 1.997, unless examination set forth in § 1.20(c)(2).
authorized by the Director. (b) A request for inter partes reexam-
(b) Once a final decision has been en- ination must include the following
tered against a party in a civil action parts:
arising in whole or in part under 28 (1) An identification of the patent by
U.S.C. 1338 that the party has not sus- patent number and every claim for
tained its burden of proving invalidity which reexamination is requested.
of any patent claim-in-suit, then nei- (2) A citation of the patents and
ther that party nor its privies may printed publications which are pre-
thereafter request inter partes reexam- sented to provide a showing that there
ination of any such patent claim on the is a reasonable likelihood that the re-
basis of issues which that party, or its quester will prevail with respect to at
privies, raised or could have raised in least one of the claims challenged in
such civil action, and an inter partes re- the request.
examination requested by that party, (3) A statement pointing out, based
or its privies, on the basis of such on the cited patents and printed publi-
issues may not thereafter be main- cations, each showing of a reasonable
tained by the Office. likelihood that the requester will pre-
(c) If a final decision in an inter partes vail with respect to at least one of the
claims challenged in the request, and a
reexamination proceeding instituted
detailed explanation of the pertinency
by a third party requester is favorable
and manner of applying the patents
to patentability of any original, pro-
and printed publications to every claim
posed amended, or new claims of the
for which reexamination is requested.
patent, then neither that party nor its
(4) A copy of every patent or printed
privies may thereafter request inter
publication relied upon or referred to
partes reexamination of any such pat-
in paragraphs (b)(1) through (3) of this
ent claims on the basis of issues which
section, accompanied by an English
that party, or its privies, raised or language translation of all the nec-
could have raised in such inter partes essary and pertinent parts of any non-
reexamination proceeding. English language document.
§ 1.913 Persons eligible to file, and (5) A copy of the entire patent includ-
time for filing, a request for inter ing the front face, drawings, and speci-
partes reexamination. fication/claims (in double column for-
mat) for which reexamination is re-
(a) Except as provided for in § 1.907 quested, and a copy of any disclaimer,
and in paragraph (b) of this section, certificate of correction, or reexamina-
any person other than the patent tion certificate issued in the patent.
owner or its privies may, at any time All copies must have each page plainly
during the period of enforceability of a written on only one side of a sheet of
patent which issued from an original paper.
application filed in the United States (6) A certification by the third party
on or after November 29, 1999, file a re- requester that a copy of the request
quest for inter partes reexamination by has been served in its entirety on the
the Office of any claim of the patent on patent owner at the address provided
the basis of prior art patents or printed for in § 1.33(c). The name and address of
publications cited under § 1.501. the party served must be indicated. If
(b) Any request for an inter partes re- service was not possible, a duplicate
examination submitted on or after Sep- copy of the request must be supplied to

tember 16, 2012, will not be accorded a the Office.
200
(7) A certification by the third party reexamination under § 1.915, the exam-
requester that the estoppel provisions iner will consider the request and de-
of § 1.907 do not prohibit the inter partes termine whether or not the request and
reexamination. the prior art establish a reasonable
(8) A statement identifying the real likelihood that the requester will pre-
party in interest to the extent nec- vail with respect to at least one of the
essary for a subsequent person filing an claims challenged in the request. The
inter partes reexamination request to examiner’s determination will be based
determine whether that person is a on the claims in effect at the time of
privy. the determination, will become a part
(c) If an inter partes request is filed by of the official file of the patent, and
an attorney or agent identifying an- will be mailed to the patent owner at
other party on whose behalf the re- the address as provided for in § 1.33(c)
quest is being filed, the attorney or and to the third party requester. If the
agent must have a power of attorney examiner determines that the request
from that party or be acting in a rep- has not established a reasonable likeli-
resentative capacity pursuant to § 1.34. hood that the requester will prevail
(d) If the inter partes request does not with respect to at least one of the chal-
include the fee for requesting inter lenged claims, the examiner shall
partes reexamination required by para- refuse the request and shall not order
graph (a) of this section and meet all inter partes reexamination.
the requirements of paragraph (b) of [76 FR 59058, Sept. 23, 2011]
this section, then the person identified
as requesting inter partes reexamina- § 1.925 Partial refund if request for
tion will be so notified and will gen- inter partes reexamination is not
erally be given an opportunity to com- ordered.
plete the request within a specified Where inter partes reexamination is
time. Failure to comply with the no- not ordered, a refund of a portion of
tice will result in the inter partes reex- the fee for requesting inter partes reex-
amination request not being granted a amination will be made to the re-
filing date, and will result in place- quester in accordance with § 1.26(c).
ment of the request in the patent file
as a citation if it complies with the re- § 1.927 Petition to review refusal to
quirements of § 1.501. order inter partes reexamination.
[65 FR 76777, Dec. 7, 2000, as amended at 71 The third party requester may seek
FR 9262, Feb. 23, 2006; 71 FR 44223, Aug. 4, review by a petition to the Director
2006; 72 FR 18906, Apr. 16, 2007; 76 FR 59058, under § 1.181 within one month of the
Sept. 23, 2011] mailing date of the examiner’s deter-
mination refusing to order inter partes
§ 1.919 Filing date of request for inter reexamination. Any such petition must
partes reexamination. comply with § 1.181(b). If no petition is
(a) The filing date of a request for timely filed or if the decision on peti-
inter partes reexamination is the date tion affirms that a reasonable likeli-
on which the request satisfies all the hood that the requester will prevail
requirements for the request set forth with respect to at least one of the
in § 1.915. claims challenged in the request has
(b) If the request is not granted a fil- not been established, the determina-
ing date, the request will be placed in tion shall be final and nonappealable.
the patent file as a citation of prior art [76 FR 59058, Sept. 23, 2011]
if it complies with the requirements of
§ 1.501. Inter Partes REEXAMINATION OF PATENTS
FR 9262, Feb. 23, 2006] § 1.931 Order for inter partes reexam-
ination.
§ 1.923 Examiner’s determination on (a) If it is found that there is a rea-
the request for inter partes reexam- sonable likelihood that the requester
ination. will prevail with respect to at least one
Within three months following the of the claims challenged in the request,
filing date of a request for inter partes the determination will include an order
201
§ 1.933 37 CFR Ch. I (7–1–16 Edition)
for inter partes reexamination of the § 1.937 Conduct of inter partes reexam-
patent for resolution of the question of ination.
whether the requester will prevail. (a) All inter partes reexamination pro-
(b) If the order for inter partes reex- ceedings, including any appeals to the
amination resulted from a petition pur- Patent Trial and Appeal Board, will be
suant to § 1.927, the inter partes reexam- conducted with special dispatch within
ination will ordinarily be conducted by the Office, unless the Director makes a
an examiner other than the examiner determination that there is good cause
responsible for the initial determina-
for suspending the reexamination pro-
tion under § 1.923.
ceeding.
[65 FR 76777, Dec. 7, 2000, as amended at 76 (b) The inter partes reexamination
FR 59058, Sept. 23, 2011] proceeding will be conducted in accord-
ance with §§ 1.104 through 1.116, the sec-
INFORMATION DISCLOSURE IN Inter Partes tions governing the application exam-
REEXAMINATION ination process, and will result in the
§ 1.933 Patent owner duty of disclo- issuance of an inter partes reexamina-
sure in inter partes reexamination tion certificate under § 1.997, except as
proceedings. otherwise provided.
(a) Each individual associated with (c) All communications between the
the patent owner in an inter partes re- Office and the parties to the inter partes
examination proceeding has a duty of reexamination which are directed to
candor and good faith in dealing with the merits of the proceeding must be in
the Office, which includes a duty to writing and filed with the Office for
disclose to the Office all information entry into the record of the proceeding.
known to that individual to be mate- (d) A petition in an inter partes reex-
rial to patentability in a reexamina- amination proceeding must be accom-
tion proceeding as set forth in § 1.555(a) panied by the fee set forth in
and (b). The duty to disclose all infor- § 1.20(c)(6), except for petitions under
mation known to be material to pat- § 1.956 to extend the period for response
entability in an inter partes reexamina- by a patent owner, petitions under
tion proceeding is deemed to be satis- § 1.958 to accept a delayed response by a
fied by filing a paper in compliance patent owner, petitions under § 1.78 to
with the requirements set forth in accept an unintentionally delayed ben-
§ 1.555(a) and (b). efit claim, and petitions under § 1.530(l)
(b) The responsibility for compliance for correction of inventorship in a reex-
with this section rests upon the indi- amination proceeding.
viduals designated in paragraph (a) of [65 FR 76777, as amended at 77 FR 46628, Aug.
this section, and no evaluation will be 6, 2012; 77 FR 48853, Aug. 14, 2012]
made by the Office in the reexamina-
tion proceeding as to compliance with § 1.939 Unauthorized papers in inter
this section. If questions of compliance partes reexamination.
with this section are raised by the pat- (a) If an unauthorized paper is filed
ent owner or the third party requester by any party at any time during the
during a reexamination proceeding,
inter partes reexamination proceeding
they will be noted as unresolved ques-
it will not be considered and may be re-
tions in accordance with § 1.906(c).
turned.
OFFICE ACTIONS AND RESPONSES (BE- (b) Unless otherwise authorized, no
FORE THE EXAMINER) IN Inter Partes paper shall be filed prior to the initial
REEXAMINATION Office action on the merits of the inter
partes reexamination.
§ 1.935 Initial Office action usually ac-
companies order for inter partes re- § 1.941 Amendments by patent owner
examination. in inter partes reexamination.
The order for inter partes reexamina- Amendments by patent owner in inter
tion will usually be accompanied by partes reexamination proceedings are
the initial Office action on the merits made by filing a paper in compliance
of the reexamination. with §§ 1.530(d)–(k) and 1.943.
202
§ 1.943 Requirements of responses, ments within a period of 30 days from

written comments, and briefs in the date of service of the patent own-
inter partes reexamination. er’s response. These comments shall be
(a) The form of responses, written limited to issues raised by the Office
comments, briefs, appendices, and action or the patent owner’s response.
other papers must be in accordance The time for submitting comments by
with the requirements of § 1.52. the third party requester may not be
(b) Responses by the patent owner extended. For the purpose of filing the
and written comments by the third written comments by the third party
party requester shall not exceed 50 requester, the comments will be con-
pages in length, excluding amend- sidered as having been received in the
ments, appendices of claims, and ref- Office as of the date of deposit specified
erence materials such as prior art ref- in the certificate under § 1.8.
erences.
(c) Appellant’s briefs filed by the pat- § 1.948 Limitations on submission of
ent owner and the third party re- prior art by third party requester
quester shall not exceed thirty pages or following the order for inter partes
reexamination.
14,000 words in length, excluding appen-
dices of claims and reference materials (a) After the inter partes reexamina-
such as prior art references. All other tion order, the third party requester
briefs filed by any party shall not ex- may only cite additional prior art as
ceed fifteen pages in length or 7,000 defined under § 1.501 if it is filed as part
words. If the page limit for any brief is of a comments submission under § 1.947
exceeded, a certificate is required stat- or § 1.951(b) and is limited to prior art:
ing the number of words contained in (1) which is necessary to rebut a find-
the brief. ing of fact by the examiner;
(2) which is necessary to rebut a re-
§ 1.945 Response to Office action by sponse of the patent owner; or
patent owner in inter partes reex- (3) which for the first time became
amination.
known or available to the third party
(a) The patent owner will be given at requester after the filing of the request
least thirty days to file a response to for inter partes reexamination pro-
any Office action on the merits of the ceeding. Prior art submitted under
inter partes reexamination. paragraph (a)(3) of this section must be
(b) Any supplemental response to the accompanied by a statement as to
Office action will be entered only when the prior art first became known
where the supplemental response is ac- or available to the third party re-
companied by a showing of sufficient quester and must include a discussion
cause why the supplemental response of the pertinency of each reference to
should be entered. The showing of suffi- the patentability of at least one claim.
cient cause must include: (b) [Reserved]
(1) An explanation of how the re-
quirements of § 1.111(a)(2)(i) are satis- § 1.949 Examiner’s Office action clos-
fied; ing prosecution in inter partes reex-
(2) An explanation of why the supple- amination.
mental response was not presented to- Upon consideration of the issues a
gether with the original response to second or subsequent time, or upon a
the Office action; and determination of patentability of all
(3) A compelling reason to enter the claims, the examiner shall issue an Of-
supplemental response. fice action treating all claims present
[72 FR 18906, Apr. 16, 2007] in the inter partes reexamination, which
may be an action closing prosecution.
§ 1.947 Comments by third party re- The Office action shall set forth all re-
quester to patent owner’s response jections and determinations not to
in inter partes reexamination. make a proposed rejection, and the
Each time the patent owner files a grounds therefor. An Office action will
response to an Office action on the not usually close prosecution if it in-
merits pursuant to § 1.945, a third party cludes a new ground of rejection which
requester may once file written com- was not previously addressed by the
203
§ 1.951 37 CFR Ch. I (7–1–16 Edition)
patent owner, unless the new ground of Appeal Notice limited to the identi-
was necessitated by an amendment. fied issues shall be issued.
(c) The Right of Appeal Notice shall
§ 1.951 Options after Office action clos- be a final action, which comprises a
ing prosecution in inter partes reex- final rejection setting forth each
amination. ground of rejection and/or final deci-
(a) After an Office action closing sion favorable to patentability includ-
prosecution in an inter partes reexam- ing each determination not to make a
ination, the patent owner may once file proposed rejection, an identification of
comments limited to the issues raised the status of each claim, and the rea-
in the Office action closing prosecu- sons for decisions favorable to patent-
tion. The comments can include a pro- ability and/or the grounds of rejection
posed amendment to the claims, which for each claim. No amendment can be
amendment will be subject to the cri- made in response to the Right of Ap-
teria of § 1.116 as to whether or not it peal Notice. The Right of Appeal No-
shall be admitted. The comments must tice shall set a one-month time period
be filed within the time set for re- for either party to appeal. If no notice
sponse in the Office action closing of appeal is filed, prosecution in the
prosecution. inter partes reexamination proceeding
(b) When the patent owner does file will be terminated, and the Director
comments, a third party requester may will proceed to issue and publish a cer-
once file comments responsive to the tificate under § 1.997 in accordance with
patent owner’s comments within 30 the Right of Appeal Notice.
days from the date of service of patent [65 FR 76777, Dec. 7, 2000, as amended at 72
owner’s comments on the third party FR 18906, Apr. 16, 2007]
requester.
INTERVIEWS PROHIBITED IN Inter Partes
§ 1.953 Examiner’s Right of Appeal No- REEXAMINATION
tice in inter partes reexamination.
(a) Upon considering the comments § 1.955 Interviews prohibited in inter
of the patent owner and the third party partes reexamination proceedings.
requester subsequent to the Office ac- There will be no interviews in an
tion closing prosecution in an inter inter partes reexamination proceeding
partes reexamination, or upon expira- which discuss the merits of the pro-
tion of the time for submitting such ceeding.
comments, the examiner shall issue a
Right of Appeal Notice, unless the ex- EXTENSIONS OF TIME, TERMINATING OF
aminer reopens prosecution and issues REEXAMINATION PROSECUTION, AND
another Office action on the merits. PETITIONS TO REVIVE IN Inter Partes
(b) Expedited Right of Appeal Notice: REEXAMINATION
At any time after the patent owner’s § 1.956 Patent owner extensions of
response to the initial Office action on time in inter partes reexamination.
the merits in an inter partes reexamina-
tion, the patent owner and all third The time for taking any action by a
party requesters may stipulate that patent owner in an inter partes reexam-
the issues are appropriate for a final ination proceeding will be extended
action, which would include a final re- only for sufficient cause and for a rea-
jection and/or a final determination fa- sonable time specified. Any request for
vorable to patentability, and may re- such extension must be filed on or be-
quest the issuance of a Right of Appeal fore the day on which action by the
Notice. The request must have the con- patent owner is due, but in no case will
currence of the patent owner and all the mere filing of a request effect any
third party requesters present in the extension. Any request for such exten-
proceeding and must identify all of the sion must be accompanied by the peti-
appealable issues and the positions of tion fee set forth in § 1.17(g). See
the patent owner and all third party § 1.304(a) for extensions of time for fil-
requesters on those issues. If the exam- ing a notice of appeal to the U.S. Court
iner determines that no other issues of Appeals for the Federal Circuit.
are present or should be raised, a Right [69 FR 56546, Sept. 21, 2004]
204
§ 1.957 Failure to file a timely, appro- APPEAL TO THE PATENT TRIAL AND AP-
priate or complete response or com- PEAL BOARD IN Inter Partes REEXAM-
ment in inter partes reexamination. INATION
(a) If the third party requester files
§ 1.959 Appeal in inter partes reexam-
an untimely or inappropriate com- ination.
ment, notice of appeal or brief in an
inter partes reexamination, the paper Appeals to the Patent Trial and Ap-
will be refused consideration. peal Board under 35 U.S.C. 134(c) are
(b) If no claims are found patentable, conducted according to part 41 of this
and the patent owner fails to file a title.
timely and appropriate response in an [77 FR 46628, Aug. 6, 2012]
inter partes reexamination proceeding,
the prosecution in the reexamination §§ 1.961–1.977 [Reserved]
proceeding will be a terminated pros-
ecution and the Director will proceed § 1.979 Return of Jurisdiction from the
to issue and publish a certificate con- Patent Trial and Appeal Board; ter-
mination of appeal proceedings.
cluding the reexamination proceeding
under § 1.997 in accordance with the (a) Jurisdiction over an inter partes
last action of the Office. reexamination proceeding passes to the
(c) If claims are found patentable and examiner after a decision by the Pat-
the patent owner fails to file a timely ent Trial and Appeal Board upon trans-
and appropriate response to any Office mittal of the file to the examiner, sub-
action in an inter partes reexamination ject to each appellant’s right of appeal
proceeding, further prosecution will be or other review, for such further action
limited to the claims found patentable as the condition of the inter partes reex-
at the time of the failure to respond, amination proceeding may require, to
and to any claims added thereafter carry into effect the decision of the
which do not expand the scope of the Patent Trial and Appeal Board.
claims which were found patentable at (b) Upon judgment in the appeal be-
that time. fore the Patent Trial and Appeal
(d) When action by the patent owner Board, if no further appeal has been
is a bona fide attempt to respond and to taken (§ 1.983), the prosecution in the
advance the prosecution and is sub- inter partes reexamination proceeding
stantially a complete response to the will be terminated and the Director
Office action, but consideration of will issue and publish a certificate
some matter or compliance with some under § 1.997 concluding the proceeding.
requirement has been inadvertently If an appeal to the U.S. Court of Ap-
omitted, an opportunity to explain and peals for the Federal Circuit has been
supply the omission may be given. filed, that appeal is considered termi-
nated when the mandate is issued by
the Court.
FR 18906, Apr. 16, 2007]
[77 FR 46628, Aug. 6, 2012]
§ 1.958 Petition to revive inter partes
reexamination prosecution termi- § 1.981 Reopening after a final deci-
nated for lack of patent owner re- sion of the Patent Trial and Appeal
sponse. Board.
If a response by the patent owner is When a decision by the Patent Trial
not timely filed in the Office, a peti- and Appeal Board on appeal has be-
tion may be filed pursuant to § 1.137 to come final for judicial review, prosecu-
revive a reexamination prosecution tion of the inter partes reexamination
terminated under § 1.957(b) or limited proceeding will not be reopened or re-
under § 1.957(c) if the delay in response considered by the primary examiner
was unintentional. except under the provisions of § 41.77 of
this title without the written author-
[78 FR 62408, Oct. 21, 2013]

ity of the Director, and then only for
205
§ 1.983 37 CFR Ch. I (7–1–16 Edition)
the consideration of matters not al- lant’s notice of appeal under paragraph
ready adjudicated, sufficient cause (b) of this section, or notice of cross ap-
being shown. peal under paragraphs (c) or (d) of this
[77 FR 46628, Aug. 6, 2012]
section, take the following steps:
(1) In the U.S. Patent and Trademark
APPEAL TO THE UNITED STATES COURT Office, timely file a written notice di-
OF APPEALS FOR THE FEDERAL CIRCUIT rected to the Director electing to par-
IN Inter Partes REEXAMINATION ticipate in the appellant’s appeal to the
U.S. Court of Appeals for the Federal
§ 1.983 Appeal to the United States Circuit by mail to, or hand service on,
Court of Appeals for the Federal the General Counsel as provided in
Circuit in inter partes reexamina- § 104.2;
tion.
(2) In the U.S. Court of Appeals for
(a) The patent owner or third party the Federal Circuit, file a copy of the
requester in an inter partes reexamina- notice electing to participate in ac-
tion proceeding who is a party to an cordance with the rules of the U.S.
appeal to the Patent Trial and Appeal Court of Appeals for the Federal Cir-
Board and who is dissatisfied with the cuit; and
decision of the Patent Trial and Appeal (3) Serve a copy of the notice electing
Board may, subject to § 41.81, appeal to to participate on every other party in
the U.S. Court of Appeals for the Fed-
the reexamination proceeding in the
eral Circuit and may be a party to any
manner provided in § 1.248.
appeal thereto taken from a reexam-
(f) Notwithstanding any provision of
ination decision of the Patent Trial
and Appeal Board. the rules, in any reexamination pro-
(b) The appellant must take the fol- ceeding commenced prior to November
lowing steps in such an appeal: 2, 2002, the third party requester is pre-
(1) In the U.S. Patent and Trademark cluded from appealing and cross ap-
Office, timely file a written notice of pealing any decision of the Patent
appeal directed to the Director in ac- Trial and Appeal Board to the U.S.
cordance with §§ 1.302 and 1.304; Court of Appeals for the Federal Cir-
(2) In the U.S. Court of Appeals for cuit, and the third party requester is
the Federal Circuit, file a copy of the precluded from participating in any ap-
notice of appeal and pay the fee, as pro- peal taken by the patent owner to the
vided for in the rules of the U.S. Court U.S. Court of Appeals for the Federal
of Appeals for the Federal Circuit; and Circuit.
(3) Serve a copy of the notice of ap- [68 FR 71008, Dec. 22, 2003, as amended at 72
peal on every other party in the reex- FR 18907, Apr. 16, 2007; 77 FR 46628, Aug. 6,
amination proceeding in the manner 2012]
provided in § 1.248.
(c) If the patent owner has filed a no- CONCURRENT PROCEEDINGS INVOLVING
tice of appeal to the U.S. Court of Ap- SAME PATENT IN Inter Partes REEXAM-
peals for the Federal Circuit, the third INATION
party requester may cross appeal to
the U.S. Court of Appeals for the Fed- § 1.985 Notification of prior or concur-
eral Circuit if also dissatisfied with the rent proceedings in inter partes re-
examination.
decision of the Patent Trial and Appeal
Board. (a) In any inter partes reexamination
(d) If the third party requester has proceeding, the patent owner shall call
filed a notice of appeal to the U.S. the attention of the Office to any prior
Court of Appeals for the Federal Cir- or concurrent proceedings in which the
cuit, the patent owner may cross ap- patent is or was involved, including but
peal to the U.S. Court of Appeals for not limited to interference or trial be-
the Federal Circuit if also dissatisfied fore the Patent Trial and Appeal
with the decision of the Patent Trial Board, reissue, reexamination, or liti-
and Appeal Board. gation and the results of such pro-
(e) A party electing to participate in ceedings.
an appellant’s appeal must, within (b) Notwithstanding any provision of

fourteen days of service of the appel- the rules, any person at any time may
206
file a paper in an inter partes reexam- on a patent, a decision may be made to

ination proceeding notifying the Office merge the two proceedings or to sus-
of a prior or concurrent proceeding in pend one of the two proceedings. Where
which the same patent is or was in- merger of a reissue application and an
volved, including but not limited to in- inter partes reexamination proceeding
terference or trial before the Patent is ordered, the merged proceeding will
Trial and Appeal Board, reissue, reex- be conducted in accordance with §§ 1.171
amination, or litigation and the results through 1.179, and the patent owner
of such proceedings. Such paper must will be required to place and maintain
be limited to merely providing notice the same claims in the reissue applica-
of the other proceeding without discus- tion and the inter partes reexamination
sion of issues of the current inter partes proceeding during the pendency of the
reexamination proceeding. merged proceeding. In a merged pro-
[77 FR 46629, Aug. 6, 2012]
ceeding the third party requester may
participate to the extent provided
§ 1.987 Suspension of inter partes reex- under §§ 1.902 through 1.997 and 41.60
amination proceeding due to litiga- through 41.81, except that such partici-
tion. pation shall be limited to issues within
If a patent in the process of inter the scope of inter partes reexamination.
partes reexamination is or becomes in- The examiner’s actions and any re-
volved in litigation, the Director shall sponses by the patent owner or third
determine whether or not to suspend party requester in a merged proceeding
the inter partes reexamination pro- will apply to both the reissue applica-
ceeding. tion and the inter partes reexamination
proceeding and be physically entered
§ 1.989 Merger of concurrent reexam- into both files. Any inter partes reexam-
ination proceedings. ination proceeding merged with a re-
(a) If any reexamination is ordered issue application shall be concluded by
while a prior inter partes reexamination the grant of the reissued patent.
proceeding is pending for the same pat- [72 FR 18907, Apr. 16, 2007]
ent and prosecution in the prior inter
partes reexamination proceeding has § 1.993 Suspension of concurrent inter-
not been terminated, a decision may be ference and inter partes reexamina-
made to merge the two proceedings or tion proceeding.
to suspend one of the two proceedings. If a patent in the process of inter
Where merger is ordered, the merged partes reexamination is or becomes in-
examination will normally result in volved in an interference or trial before
the issuance and publication of a single the Patent Trial and Appeal Board, the
reexamination certificate under § 1.997. Director may suspend the inter partes
(b) An inter partes reexamination pro- reexamination, interference, or trial.
ceeding filed under § 1.913 which is The Director will not consider a re-
merged with an ex parte reexamination quest to suspend an interference or
proceeding filed under § 1.510 will result trial unless a motion under § 41.121(a)(3)
in the merged proceeding being gov- of this title to suspend the interference
erned by §§ 1.902 through 1.997, except or trial has been presented to, and de-
that the rights of any third party re- nied by, an administrative patent judge
quester of the ex parte reexamination and the request is filed within ten (10)
shall be governed by §§ 1.510 through days of a decision by an administrative
1.560. patent judge denying the motion for
suspension or such other time as the
FR 18907, Apr. 16, 2007]
administrative patent judge may set.
[77 FR 46629, Aug. 6, 2012]
§ 1.991 Merger of concurrent reissue
application and inter partes reex- § 1.995 Third party requester’s partici-
amination proceeding. pation rights preserved in merged
If a reissue application and an inter proceeding.
partes reexamination proceeding on When a third party requester is in-
which an order pursuant to § 1.931 has volved in one or more proceedings, in-
been mailed are pending concurrently cluding an inter partes reexamination
207
§ 1.997 37 CFR Ch. I (7–1–16 Edition)
proceeding, the merger of such pro- Subpart I—International Design

ceedings will be accomplished so as to Application
preserve the third party requester’s
right to participate to the extent spe-
SOURCE: 80 FR 17964, Apr. 2, 2015, unless
cifically provided for in these regula- otherwise noted.
tions. In merged proceedings involving
different requesters, any paper filed by GENERAL INFORMATION
one party in the merged proceeding
shall be served on all other parties of § 1.1001 Definitions related to inter-
the merged proceeding. national design applications.
(a) Article as used in this subpart
REEXAMINATION CERTIFICATE IN Inter means an article of the Hague Agree-
Partes REEXAMINATION ment;
§ 1.997 Issuance and publication of (b) Regulations as used in this sub-
inter partes reexamination certifi- part, when capitalized, means the
cate concludes inter partes reexam- ‘‘Common Regulations Under the 1999
ination proceeding. Act and the 1960 Act of the Hague
(a) To conclude an inter partes reex- Agreement’’;
(c) Rule as used in this subpart, when
amination proceeding, the Director
capitalized, means one of the Regula-
will issue and publish an inter partes re-
tions;
examination certificate in accordance
(d) Administrative Instructions as used
with 35 U.S.C. 316 setting forth the re-
in this subpart means the Administra-
sults of the inter partes reexamination
tive Instructions referred to in Rule 34;
proceeding and the content of the pat-
(e) 1960 Act as used in this subpart
ent following the inter partes reexam-
means the Act signed at the Hague on
ination proceeding.
November 28, 1960, of the Hague Agree-
(b) A certificate will be issued and
ment;
published in each patent in which an
(f) Other terms and expressions in
inter partes reexamination proceeding
subpart I not defined in this section are
has been ordered under § 1.931. Any
as defined in Article 1, Rule 1, and 35
statutory disclaimer filed by the pat-
U.S.C. 381.
ent owner will be made part of the cer-
tificate. § 1.1002 The United States Patent and
(c) The certificate will be sent to the Trademark Office as an office of in-
patent owner at the address as pro- direct filing.
vided for in § 1.33(c). A copy of the cer- (a) The United States Patent and
tificate will also be sent to the third Trademark Office, as an office of indi-
party requester of the inter partes reex- rect filing, shall accept international
amination proceeding. design applications where the appli-
(d) If a certificate has been issued cant’s Contracting Party is the United
and published which cancels all of the States.
claims of the patent, no further Office (b) The major functions of the United
proceedings will be conducted with States Patent and Trademark Office as
that patent or any reissue applications an office of indirect filing include:
or any reexamination requests relating (1) Receiving and according a receipt
thereto. date to international design applica-
(e) If the inter partes reexamination tions;
proceeding is terminated by the grant (2) Collecting and, when required,
of a reissued patent as provided in transmitting fees due for processing
§ 1.991, the reissued patent will con- international design applications;
stitute the reexamination certificate (3) Determining compliance with ap-
required by this section and 35 U.S.C. plicable requirements of part 5 of this
316. chapter; and
(f) A notice of the issuance of each (4) Transmitting an international de-
certificate under this section will be sign application to the International
published in the Official Gazette. Bureau, unless prescriptions con-
[65 FR 76777, Dec. 7, 2000, as amended at 72 cerning national security prevent the
FR 18907, Apr. 16, 2007] application from being transmitted.
208
§ 1.1003 The United States Patent and § 1.1005 Display of currently valid con-
Trademark Office as a designated trol number under the Paperwork
office. Reduction Act.
(a) The United States Patent and (a) Pursuant to the Paperwork Re-
Trademark Office will act as a des- duction Act of 1995 (44 U.S.C. 3501 et
ignated office (‘‘United States Des- seq.), the collection of information in
ignated Office’’) for international de- this subpart has been reviewed and ap-
sign applications in which the United proved by the Office of Management
States has been designated as a Con- and Budget under control number 0651–
tracting Party in which protection is 0075.
sought. (b) Notwithstanding any other provi-
(b) The major functions of the United sion of law, no person is required to re-
States Designated Office include: spond to nor shall a person be subject
(1) Accepting for national examina- to a penalty for failure to comply with
tion international design applications a collection of information subject to
which satisfy the requirements of the the requirements of the Paperwork Re-
Hague Agreement, the Regulations, duction Act unless that collection of
and the regulations; information displays a currently valid
(2) Performing an examination of the Office of Management and Budget con-
international design application in ac- trol number. This section constitutes
cordance with 35 U.S.C. chapter 16; and the display required by 44 U.S.C. 3512(a)
(3) Communicating the results of ex- and 5 CFR 1320.5(b)(2)(i) for the collec-
amination to the International Bureau. tion of information under Office of
Management and Budget control num-
§ 1.1004 The International Bureau. ber 0651–0075 (see 5 CFR
1320.5(b)(2)(ii)(D)).
(a) The International Bureau is the
World Intellectual Property Organiza- WHO MAY FILE AN INTERNATIONAL
tion located at Geneva, Switzerland. It DESIGN APPLICATION
is the international intergovernmental
organization which acts as the coordi- § 1.1011 Applicant for international de-
nating body under the Hague Agree- sign application.
ment and the Regulations. (a) Only persons who are nationals of
(b) The major functions of the Inter- the United States or who have a domi-
national Bureau include: cile, a habitual residence, or a real and
(1) Receiving international design ap- effective industrial or commercial es-
plications directly from applicants and tablishment in the territory of the
indirectly from an office of indirect fil- United States may file international
ing; design applications through the United
(2) Collecting required fees and cred- States Patent and Trademark Office.
iting designation fees to the accounts (b) Although the United States Pat-
of the Contracting Parties concerned; ent and Trademark Office will accept
(3) Reviewing international design international design applications filed
applications for compliance with pre- by any person referred to in paragraph
scribed formal requirements; (a) of this section, an international de-
(4) Translating international design sign application designating the United
applications into the required lan- States may be refused by the Office as
guages for recordation and publication; a designated office if the applicant is
(5) Registering international designs not a person qualified under 35 U.S.C.
in the International Register where the chapter 11 to be an applicant.
international design application com-
plies with the applicable requirements; § 1.1012 Applicant’s Contracting Party.
(6) Publishing international registra- In order to file an international de-
tions in the International Designs Bul- sign application through the United
letin; and States Patent and Trademark Office as
(7) Sending copies of the publication an office of indirect filing, the United
of the international registration to States must be applicant’s Contracting

each designated office. Party (Articles 4 and 1(xiv)).
209
§ 1.1021 37 CFR Ch. I (7–1–16 Edition)
THE INTERNATIONAL DESIGN ment or giving the instructions (Rule

APPLICATION 7(3)(vii)); and
(10) An indication of applicant’s Con-
§ 1.1021 Contents of the international tracting Party as required under Rule
design application. 7(4)(a).
(a) Mandatory contents. The inter- (b) Additional mandatory contents re-
national design application shall be in quired by certain Contracting Parties. (1)
English, French, or Spanish (Rule 6(1)) Where the international design appli-
and shall contain or be accompanied cation contains the designation of a
by: Contracting Party that requires, pur-
(1) A request for international reg- suant to Article 5(2), any of the fol-
istration under the Hague Agreement lowing elements, then the inter-
(Article 5(1)(i)); national design application shall con-
(2) The prescribed data concerning tain such required element(s):
the applicant (Article 5(1)(ii) and Rule (i) Indications concerning the iden-
7(3)(i) and (ii)); tity of the creator of the industrial de-
(3) The prescribed number of copies of sign that is the subject of that applica-
a reproduction or, at the choice of the tion (Rule 11(1));
applicant, of several different repro- (ii) A brief description of the repro-
ductions of the industrial design that duction or of the characteristic fea-
is the subject of the international de- tures of the industrial design that is
sign application, presented in the pre- the subject of that application (Rule
scribed manner; however, where the in- 11(2));
dustrial design is two-dimensional and (iii) A claim (Rule 11(3)).
a request for deferment of publication (2) Where the international design
is made in accordance with Article 5(5), application contains the designation of
the international design application a Contracting Party that has made a
may, instead of containing reproduc- declaration under Rule 8(1), then the
tions, be accompanied by the pre- international application shall contain
scribed number of specimens of the in- the statement, document, oath or dec-
dustrial design (Article 5(1)(iii)); laration specified in that declaration
(4) An indication of the product or (Rule 7(4)(c)).
products that constitute the industrial (c) Optional contents. The inter-
design or in relation to which the in- national design application may con-
dustrial design is to be used, as pre- tain:
scribed (Article 5(1)(iv) and Rule (1) Two or more industrial designs,
7(3)(iv)); subject to the prescribed conditions
(5) An indication of the designated (Article 5(4) and Rule 7(7));
Contracting Parties (Article 5(1)(v)); (2) A request for deferment of publi-
(6) The prescribed fees (Article cation (Article 5(5) and Rule 7(5)(e)) or
5(1)(vi) and Rule 12(1)); a request for immediate publication
(7) The Contracting Party or Parties (Rule 17);
in respect of which the applicant ful- (3) An element referred to in item (i)
fills the conditions to be the holder of or (ii) of Article 5(2)(b) of the Hague
an international registration (Rule Agreement or in Article 8(4)(a) of the
7(3)(iii)); 1960 Act even where that element is not
(8) The number of industrial designs required in consequence of a notifica-
included in the international design ap- tion in accordance with Article 5(2)(a)
plication, which may not exceed 100, of the Hague Agreement or in con-
and the number of reproductions or sequence of a requirement under Arti-
specimens of the industrial designs ac- cle 8(4)(a) of the 1960 Act (Rule 7(5)(a));
companying the international design (4) The name and address of appli-
application (Rule 7(3)(v)); cant’s representative, as prescribed
(9) The amount of the fees being paid (Rule 7(5)(b));
and the method of payment, or instruc- (5) A claim of priority of one or more
tions to debit the required amount of earlier filed applications in accordance
fees to an account opened with the with Article 6 and Rule 7(5)(c);
International Bureau, and the identi- (6) A declaration, for purposes of Ar-
fication of the party effecting the pay- ticle 11 of the Paris Convention, that
210
the product or products which con- § 1.1022 Form and signature.

stitute the industrial design or in (a) The international design applica-
which the industrial design is incor- tion shall be presented on the official
porated have been shown at an official form (Rules 7(1) and 1(vi)).
or officially recognized international (b) The international design applica-
exhibition, together with the place tion shall be signed by the applicant.
where the exhibition was held and the
date on which the product or products § 1.1023 Filing date of an international
were first exhibited there and, where design application in the United
States.
less than all the industrial designs con-
tained in the international design ap- (a) Subject to paragraph (b) of this
plication are concerned, the indication section, the filing date of an inter-
of those industrial designs to which the national design application in the
declaration relates or does not relate United States is the date of inter-
national registration determined by
(Rule 7(5)(d));
the International Bureau under the
(7) Any declaration, statement or Hague Agreement (35 U.S.C. 384 and
other relevant indication as may be 381(a)(5)).
specified in the Administrative In- (b) Where the applicant believes the
structions (Rule 7(5)(f)); international design application is en-
(8) A statement that identifies infor- titled under the Hague Agreement to a
mation known by the applicant to be filing date in the United States other
material to the eligibility for protec- than the date of international registra-
tion of the industrial design concerned tion, the applicant may petition the
(Rule 7(5)(g)); Director under this paragraph to ac-
(9) A proposed translation of any text cord the international design applica-
matter contained in the international tion a filing date in the United States
design application for purposes of re- other than the date of international
cording and publication (Rule 6(4)). registration. Such petition must be ac-
companied by the fee set forth in
(d) Required contents where the United
§ 1.17(f) and include a showing to the
States is designated. In addition to the
satisfaction of the Director that the
mandatory requirements set forth in international design application is en-
paragraph (a) of this section, an inter- titled to such filing date.
national design application that des-
ignates the United States shall contain § 1.1024 The description.
or be accompanied by: An international design application
(1) A claim (§§ 1.1021(b)(1)(iii) and designating the United States must in-
1.1025); clude a specification as prescribed by
(2) Indications concerning the iden- 35 U.S.C. 112 and preferably include a
tity of the creator (i.e., the inventor, brief description of the reproduction
see § 1.9(d)) in accordance with Rule pursuant to Rule 7(5)(a) describing the
11(1); and view or views of the reproductions.
(3) The inventor’s oath or declaration
§ 1.1025 The claim.
(§§ 1.63 and 1.64). The requirements in
§§ 1.63(b) and 1.64(b)(4) to identify each The specific wording of the claim in
inventor by his or her legal name, an international design application
mailing address, and residence, if an in- designating the United States shall be
ventor lives at a location which is dif- in formal terms to the ornamental de-
sign for the article (specifying name of
ferent from the mailing address, and
article) as shown, or as shown and de-
the requirement in § 1.64(b)(2) to iden-
scribed. More than one claim is neither
tify the residence and mailing address required nor permitted for purposes of
of the person signing the substitute the United States.
statement will be considered satisfied
by the presentation of such informa- § 1.1026 Reproductions.
tion in the international design appli- Reproductions shall comply with the
cation prior to international registra- requirements of Rule 9 and Part Four

tion. of the Administrative Instructions.
211
§ 1.1027 37 CFR Ch. I (7–1–16 Edition)
§ 1.1027 Specimens. paid no later than the date of payment

Where a request for deferment of pub- of the transmittal fee required under
lication has been filed in respect of a paragraph (a) of this section. Any pay-
two-dimensional industrial design, the ment through the Office must be in
international design application may U.S. dollars. Applicants paying the fees
include specimens of the design in ac- in paragraph (c) of this section through
cordance with Rule 10 and Part Four of the Office may be subject to a require-
the Administrative Instructions. Speci- ment by the International Bureau to
mens are not permitted in an inter- pay additional amounts where the con-
national design application that des- version from U.S. dollars to Swiss cur-
ignates the United States or any other rency results in the International Bu-
Contracting Party which does not per- reau receiving less than the prescribed
mit deferment of publication. amounts.
(e) Payment of the fees referred to in
§ 1.1028 Deferment of publication.
Article 17 and Rule 24 for renewing an
The international design application international registration (‘‘renewal
may contain a request for deferment of fees’’) is not required to maintain a
publication, provided the application U.S. patent issuing on an international
does not designate the United States or design application in force. Renewal
any other Contracting Party which fees, if required, must be submitted di-
does not permit deferment of publica-
rectly to the International Bureau.
tion.
Any renewal fee submitted to the Of-
FEES fice will not be transmitted to the
International Bureau.
§ 1.1031 International design applica-
tion fees. REPRESENTATION
(a) International design applications
filed through the Office as an office of § 1.1041 Representation in an inter-
indirect filing are subject to payment national design application.
of a transmittal fee (35 U.S.C. 382(b) (a) The applicant may appoint a rep-
and Article 4(2)) in the amount of $120. resentative before the International
(b) The Schedule of Fees annexed to Bureau in accordance with Rule 3.
the Regulations (Rule 27(1)), a list of (b) Applicants of international design
individual designation fee amounts, applications may be represented before
and a fee calculator may be viewed on the Office as an office of indirect filing
the Web site of the World Intellectual by a practitioner registered (§ 11.6) or
Property Organization, currently avail- granted limited recognition (§ 11.9(a) or
able at http://www.wipo.int/hague. (b)) to practice before the Office in pat-
(c) The following fees required by the
ent matters. Such practitioner may act
International Bureau may be paid ei-
pursuant to § 1.34 or pursuant to ap-
ther directly to the International Bu-
reau or through the Office as an office pointment by the applicant. The ap-
of indirect filing in the amounts speci- pointment must be in writing signed by
fied on the World Intellectual Property the applicant, must give the practi-
Organization Web site described in tioner power to act on behalf of the ap-
paragraph (b) of this section: plicant, and must specify the name and
(1) International application fees registration number or limited rec-
(Rule 12(1)); and ognition number of each practitioner.
(2) Fee for descriptions exceeding 100 An appointment of a representative
words (Rule 11(2)). made in the international design appli-
(d) The fees referred to in paragraph cation pursuant to Rule 3(2) that com-
(c) of this section may be paid as fol- plies with the requirements of this
lows: paragraph will be effective as an ap-
(1) Directly to the International Bu- pointment before the Office as an office
reau in Swiss currency (see Administra- of indirect filing.
tive Instruction 801); or
(2) Through the Office as an office of

indirect filing, provided such fees are
212
§ 1.1042 Correspondence respecting tions to the International Bureau re-

international design applications ceived after transmittal of the applica-
filed with the Office as an office of tion to the International Bureau. Any
indirect filing. reply to an invitation sent to the appli-
The applicant may specify a cor- cant by the International Bureau must
respondence address for correspondence be filed directly with the International
sent by the Office as an office of indi- Bureau, and not with the Office, to
rect filing. Where no such address has avoid abandonment or other loss of
been specified, the Office will use as rights under Article 8.
the correspondence address the address
of applicant’s appointed representative RELIEF FROM PRESCRIBED TIME LIMITS;
(§ 1.1041) or, where no representative is CONVERSION TO A DESIGN APPLICATION
appointed, the address as specified in UNDER 35 U.S.C. CHAPTER 16
Administrative Instruction 302.
§ 1.1051 Relief from prescribed time
TRANSMITTAL OF INTERNATIONAL DESIGN limits.
APPLICATION TO THE INTERNATIONAL (a) If the delay in an applicant’s fail-
BUREAU
ure to act within prescribed time lim-
§ 1.1045 Procedures for transmittal of its under the Hague Agreement in con-
international design application to nection with requirements pertaining
the International Bureau. to an international design application
(a) Subject to paragraph (b) of this was unintentional, a petition may be
section and payment of the transmittal filed pursuant to this section to excuse
fee set forth in § 1.1031(a), transmittal the failure to act as to the United
of the international design application States. A grantable petition pursuant
to the International Bureau shall be to this section must be accompanied
made by the Office as provided by Rule by:
13(1). At the same time as it transmits (1) A copy of any invitation sent from
the international design application to the International Bureau setting a pre-
the International Bureau, the Office scribed time limit for which applicant
shall notify the International Bureau failed to timely act;
of the date on which it received the ap- (2) The reply required under para-
plication. The Office shall also notify graph (c) of this section, unless pre-
the applicant of the date on which it viously filed;
received the application and of the (3) The fee as set forth in § 1.17(m);
transmittal of the international design (4) A certified copy of the originally
application to the International Bu- filed international design application,
reau. unless a copy of the international de-
(b) No copy of an international design application was previously com-
sign application may be transmitted to municated to the Office from the Inter-
the International Bureau, a foreign
national Bureau or the international
designated office, or other foreign au-
design application was filed with the
thority by the Office or the applicant,
Office as an office of indirect filing,
unless the applicable requirements of
part 5 of this chapter have been satis- and a translation thereof into the
fied. English language if it was filed in an-
(c) Once transmittal of the inter- other language;
national design application has been (5) A statement that the entire delay
effected under paragraph (a) of this sec- in filing the required reply from the
tion, except for matters properly before due date for the reply until the filing of
the United States Patent and Trade- a grantable petition pursuant to this
mark Office as an office of indirect fil- paragraph was unintentional. The Di-
ing or as a designated office, all further rector may require additional informa-
correspondence concerning the application where there is a question whether
tion should be sent directly to the the delay was unintentional; and
International Bureau. The United (6) A terminal disclaimer (and fee as
States Patent and Trademark Office set forth in § 1.20(d)) required pursuant
will generally not forward communica- to paragraph (d) of this section.
213
§ 1.1052 37 CFR Ch. I (7–1–16 Edition)
(b) Any request for reconsideration of the international registration under

or review of a decision refusing to ex- Article 10(3). The conversion of an
cuse the applicant’s failure to act with- international design application to an
in prescribed time limits in connection application for a design patent under
with requirements pertaining to an § 1.53(b) will not entitle applicant to a
international design application upon refund of the transmittal fee or any fee
petition filed pursuant to this section, forwarded to the International Bureau,
to be considered timely, must be filed or the application of any such fee to-
within two months of the decision re- ward the filing fee, or any other fee, for
fusing to excuse or within such time as the application for a design patent
set in the decision. Unless a decision under § 1.53(b). The application for a de-
indicates otherwise, this time period sign patent resulting from conversion
may be extended under the provisions of an international design application
of § 1.136. must also include the basic filing fee
(c) Reply. The reply required may be: (§ 1.16(b)), the search fee (§ 1.16(l)), the
(1) The filing of a continuing applica- examination fee (§ 1.16(p)), the inven-
tion. If the international design appli- tor’s oath or declaration (§ 1.63 or 1.64),
cation has not been subject to inter- and a surcharge if required by § 1.16(f).
national registration, the reply must (b) An international design applica-
also include a grantable petition under tion will be converted to an application
§ 1.1023(b) to accord the international for a design patent under § 1.53(b) if a
design application a filing date; or decision on petition under this section
(2) A grantable petition under § 1.1052, is granted prior to transmittal of the
where the international design applica- international design application to the
tion was filed with the Office as an of- International Bureau pursuant to
fice of indirect filing. § 1.1045. Otherwise, a decision granting
(d) Terminal disclaimer. Any petition a petition under this section will be ef-
pursuant to this section must be ac- fective to convert the international de-
companied by a terminal disclaimer sign application to an application for a
and fee as set forth in § 1.321 dedicating design patent under § 1.53(b) only for
to the public a terminal part of the purposes of the designation of the
term of any patent granted thereon United States.
equivalent to the period beginning on
(c) A petition under this section will
the due date for the reply for which ap-
not be granted in an abandoned inter-
plicant failed to timely act and ending
national design application absent a
on the date of filing of the reply re-
grantable petition under § 1.1051.
quired under paragraph (c) of this sec-
tion and must also apply to any patent (d) An international design applica-
granted on a continuing design application converted under this section is
tion that contains a specific reference subject to the regulations applicable to
under 35 U.S.C. 120, 121, 365(c) or 386(c) a design application filed under 35
to the application for which relief U.S.C. chapter 16.
under this section is sought.
NATIONAL PROCESSING OF
§ 1.1052 Conversion to a design appli- INTERNATIONAL DESIGN APPLICATIONS
cation under 35 U.S.C. chapter 16.
§ 1.1061 Rules applicable.
(a) An international design applica-
tion designating the United States (a) The rules relating to applications
filed with the Office as an office of infor patents for other inventions or dis-
direct filing and meeting the require- coveries are also applicable to inter-
ments under § 1.53(b) for a filing date national design applications desig-
for an application for a design patent nating the United States, except as
may, on petition under this section, be otherwise provided in this chapter or
converted to an application for a de- required by the Articles or Regula-
sign patent under § 1.53(b) and accorded tions.
a filing date as provided therein. A pe- (b) The provisions of § 1.74, § 1.84, ex-
tition under this section must be accept for § 1.84(c), and §§ 1.152 through
companied by the fee set forth in 1.154 shall not apply to international
§ 1.17(t) and be filed prior to publication design applications.
214
§ 1.1062 Examination. action to elect one independent and

(a) Examination. The Office shall distinct design for which prosecution
make an examination pursuant to title on the merits shall be restricted. Such
35, United States Code, of an inter- requirement will normally be made be-
national design application designating fore any action on the merits but may
the United States. be made at any time before the final
(b) Timing. For each international de- action. Review of any such require-
sign application to be examined under ment is provided under §§ 1.143 and
paragraph (a) of this section, the Office 1.144.
shall, subject to Rule 18(1)(c)(ii), send
§ 1.1065 Corrections and other changes
to the International Bureau within 12 in the International Register.
months from the publication of the
international registration under Rule (a) The effects of any correction in
26(3) a notification of refusal (§ 1.1063) the International Register by the
where it appears that the applicant is International Bureau pursuant to Rule
not entitled to a patent under the law 22 in a pending nonprovisional inter-
with respect to any industrial design national design application shall be de-
that is the subject of the international cided by the Office in accordance with
registration. the merits of each situation, subject to
such other requirements as may be im-
§ 1.1063 Notification of refusal. posed. A patent issuing from an inter-
(a) A notification of refusal shall con- national design application may only
tain or indicate: be corrected in accordance with the
(1) The number of the international provisions of title 35, United States
registration; Code, for correcting patents. Any cor-
(2) The grounds on which the refusal rection under Rule 22 recorded by the
is based; International Bureau with respect to
(3) A copy of a reproduction of the an abandoned nonprovisional inter-
earlier industrial design and informa- national design application will gen-
tion concerning the earlier industrial erally not be acted upon by the Office
design, where the grounds of refusal and shall not be given effect unless
refer to similarity with an industrial otherwise indicated by the Office.
design that is the subject of an earlier (b) A recording of a partial change in
application or registration; ownership in the International Reg-
(4) Where the refusal does not relate ister pursuant to Rule 21(7) concerning
to all the industrial designs that are a transfer of less than all designs shall
the subject of the international reg- not have effect in the United States.
istration, those to which it relates or
does not relate; and § 1.1066 Correspondence address for a
(5) A time period for reply under nonprovisional international design
application.
§§ 1.134 and 1.136, where a reply to the
notification of refusal is required. (a) Unless the correspondence address
(b) Any reply to the notification of is changed in accordance with § 1.33(a),
refusal must be filed directly with the the Office will use as the correspond-
Office and not through the Inter- ence address in a nonprovisional inter-
national Bureau. The requirements of national design application the address
§ 1.111 shall apply to a reply to a notifi- according to the following order:
cation of refusal. (1) The correspondence address under
§ 1.1042;
§ 1.1064 One independent and distinct (2) The address of applicant’s rep-
design. resentative identified in the publica-
(a) Only one independent and distinct tion of the international registration;
design may be claimed in a nonprovi- and
sional international design application. (3) The address of the applicant iden-
(b) If the requirements under para- tified in the publication of the inter-
graph (a) of this section are not satis- national registration.
fied, the examiner shall in the notifica- (b) Reference in the rules to the cor-
tion of refusal or other Office action re- respondence address set forth in
quire the applicant in the reply to that § 1.33(a) shall be construed to include a
215
§ 1.1067 37 CFR Ch. I (7–1–16 Edition)
reference to this section for a non- § 1.1071 Grant of protection for an in-
provisional international design appli- dustrial design only upon issuance
cation. of a patent.
A grant of protection for an indus-
§ 1.1067 Title, description, and inven- trial design that is the subject of an
tor’s oath or declaration.
international registration shall only
(a) The title of the design must des- arise in the United States through the
ignate the particular article. Where a issuance of a patent pursuant to 35
nonprovisional international design ap- U.S.C. 389(d) or 171, and in accordance
plication does not contain a title of the with 35 U.S.C. 153.
design, the Office may establish a title.
No description, other than a reference PART 2—RULES OF PRACTICE IN
to the drawing, is ordinarily required TRADEMARK CASES
in a nonprovisional international de-
sign application.
(b) An international design applica- EDITORIAL NOTE: Part 2 is placed in the
separate grouping of parts pertaining to
tion designating the United States
trademarks regulations.
must include the inventor’s oath or
declaration. See § 1.1021(d). If the appli-
cant is notified in a notice of allow- PART 3—ASSIGNMENT, RECORD-
ability that an oath or declaration in ING AND RIGHTS OF ASSIGNEE
compliance with § 1.63, or substitute
statement in compliance with § 1.64, ex- Sec.
ecuted by or with respect to each 3.1 Definitions.
named inventor has not been filed, the DOCUMENTS ELIGIBLE FOR RECORDING
applicant must file each required oath
or declaration in compliance with 3.11 Documents which will be recorded.
3.16 Assignability of trademarks prior to
§ 1.63, or substitute statement in com- filing of an allegation of use.
pliance with § 1.64, no later than the
date on which the issue fee is paid to REQUIREMENTS FOR RECORDING
avoid abandonment. This time period is 3.21 Identification of patents and patent ap-
not extendable under § 1.136 (see plications.
§ 1.136(c)). 3.24 Requirements for documents and cover
sheets relating to patents and patent ap-
§ 1.1068 Statement of grant of protec- plications.
tion. 3.25 Recording requirements for trademark
applications and registrations.
Upon issuance of a patent on an
3.26 English language requirement.
international design application desig- 3.27 Mailing address for submitting docu-
nating the United States, the Office ments to be recorded.
may send to the International Bureau 3.28 Requests for recording.
a statement to the effect that protec-
tion is granted in the United States to COVER SHEET REQUIREMENTS
those industrial design or designs that 3.31 Cover sheet content.
are the subject of the international 3.34 Correction of cover sheet errors.
registration and covered by the patent.
FEES
§ 1.1070 Notification of Invalidation. 3.41 Recording fees.
(a) Where a design patent that was DATE AND EFFECT OF RECORDING
granted from an international design
3.51 Recording date.
application is invalidated in the United
3.54 Effect of recording.
States, and the invalidation is no 3.56 Conditional assignments.
longer subject to any review or appeal, 3.58 Governmental registers.
the patentee shall inform the Office.
(b) After receiving a notification of DOMESTIC REPRESENTATIVE
invalidation under paragraph (a) of this 3.61 Domestic representative.
section or through other means, the Of-
fice will notify the International Bu- ACTION TAKEN BY ASSIGNEE

reau in accordance with Hague Rule 20. 3.71 Prosecution by assignee.
216
3.73 Establishing right of assignee to take title to applications, patents, or reg-
action. istrations, will be recorded as provided
ISSUANCE TO ASSIGNEE in this part or at the discretion of the
Director.
3.81 Issue of patent to assignee. (b) Executive Order 9424 of February
3.85 Issue of registration to assignee.
18, 1944 (9 FR 1959, 3 CFR 1943–1948
AUTHORITY: 15 U.S.C. 1123; 35 U.S.C. 2(b)(2). Comp., p. 303) requires the several de-
SOURCE: 57 FR 29642, July 6, 1992, unless partments and other executive agen-
otherwise noted. cies of the Government, including Gov-
EDITORIAL NOTE: Nomenclature changes to
ernment-owned or Government-con-
part 3 appear at 68 FR 14337, Mar. 25, 2003. trolled corporations, to forward
promptly to the Director for recording
§ 3.1 Definitions. all licenses, assignments, or other in-
For purposes of this part, the fol- terests of the Government in or under
lowing definitions shall apply: patents or patent applications. Assign-
Application means a national applica- ments and other documents affecting
tion for patent, an international patent title to patents or patent applications
application that designates the United and documents not affecting title to
States of America, an international de- patents or patent applications required
sign application that designates the by Executive Order 9424 to be filed will
United States of America, or an appli- be recorded as provided in this part.
cation to register a trademark under (c) A joint research agreement or an
section 1 or 44 of the Trademark Act, 15 excerpt of a joint research agreement
U.S.C. 1051, or 15 U.S.C. 1126, unless will also be recorded as provided in this
otherwise indicated. part.
Assignment means a transfer by a [62 FR 53202, Oct. 10, 1997, as amended at 70
party of all or part of its right, title FR 1824, Jan. 11, 2005; 70 FR 54267, Sept. 14,
and interest in a patent, patent appli- 2005; 78 FR 62408, Oct. 21, 2013]
cation, registered mark or a mark for
which an application to register has § 3.16 Assignability of trademarks
been filed. prior to filing of an allegation of
use.
Document means a document which a
party requests to be recorded in the Of- Before an allegation of use under ei-
fice pursuant to § 3.11 and which affects ther 15 U.S.C. 1051(c) or 15 U.S.C. 1051(d)
some interest in an application, patent, is filed, an applicant may only assign
or registration. an application to register a mark under
Office means the United States Pat- 15 U.S.C. 1051(b) to a successor to the
ent and Trademark Office. applicant’s business, or portion of the
Recorded document means a document business to which the mark pertains, if
which has been recorded in the Office that business is ongoing and existing.
pursuant to § 3.11. [64 FR 48926, Sept. 8, 1999]
Registration means a trademark reg-
istration issued by the Office. REQUIREMENTS FOR RECORDING
§ 3.21 Identification of patents and
FR 17969, Apr. 2, 2015]
patent applications.
DOCUMENTS ELIGIBLE FOR RECORDING An assignment relating to a patent
must identify the patent by the patent
§ 3.11 Documents which will be renumber. An assignment relating to a
corded. national patent application must iden-
(a) Assignments of applications, pat- tify the national patent application by
ents, and registrations, and other docu- the application number (consisting of
ments relating to interests in patent the series code and the serial number;
applications and patents, accompanied e.g., 07/123,456). An assignment relating
by completed cover sheets as specified to an international patent application
in § 3.28 and § 3.31, will be recorded in which designates the United States of
the Office. Other documents, accom- America must identify the inter-
panied by completed cover sheets as national application by the inter-

specified in § 3.28 and § 3.31, affecting national application number; e.g., PCT/
217
§ 3.24 37 CFR Ch. I (7–1–16 Edition)
US2012/012345. An assignment relating ments, so original documents must not

to an international design application be submitted for recording.
which designates the United States of [69 FR 29879, May 26, 2004]
America must identify the inter-
national design application by the § 3.25 Recording requirements for
international registration number or trademark applications and reg-
by the U.S. application number as- istrations.
signed to the international design ap- (a) Documents affecting title. To record
plication. If an assignment of a patent documents affecting title to a trade-
application filed under § 1.53(b) of this mark application or registration, a leg-
chapter is executed concurrently with, ible cover sheet (see § 3.31) and one of
or subsequent to, the execution of the the following must be submitted:
patent application, but before the pat- (1) A copy of the original document;
ent application is filed, it must iden- (2) A copy of an extract from the doc-
tify the patent application by the name ument evidencing the effect on title; or
of each inventor and the title of the in- (3) A statement signed by both the
vention so that there can be no mis- party conveying the interest and the
take as to the patent application in- party receiving the interest explaining
tended. If an assignment of a provi- how the conveyance affects title.
sional application under § 1.53(c) of this (b) Name changes. Only a legible cover
chapter is executed before the provi- sheet is required (See § 3.31).
sional application is filed, it must iden- (c) All documents. (1) For electronic
tify the provisional application by the submissions: All documents must be
name of each inventor and the title of submitted as digitized images in
the invention so that there can be no Tagged Image File Format (TIFF) or
mistake as to the provisional applica- another form as prescribed by the Di-
tion intended. rector. When printed to a paper size of
either 21.6 by 27.9 cm (81⁄2 by 11 inches)
[80 FR 17969, Apr. 2, 2015] or 21.0 by 29.7 cm (DIN size A4), a 2.5 cm
(one-inch) margin must be present on
§ 3.24 Requirements for documents
and cover sheets relating to patents all sides.
and patent applications. (2) For paper or facsimile submissions:
All documents should be submitted on
(a) For electronic submissions: Either a white and non-shiny paper that is ei-
copy of the original document or an ex- ther 81⁄2 by 11 inches (21.6 by 27.9 cm) or
tract of the original document may be DIN size A4 (21.0 by 29.7 cm) with a one-
submitted for recording. All documents inch (2.5 cm) margin on all sides in ei-
must be submitted as digitized images ther case. Only one side of each page
in Tagged Image File Format (TIFF) or may be used. The Office will not return
another form as prescribed by the Di- recorded documents, so original docu-
rector. When printed to a paper size of ments should not be submitted for re-
either 21.6 by 27.9 cm (81⁄2 by 11 inches) cording.
or 21.0 by 29.7 cm (DIN size A4), the
document must be legible and a 2.5 cm [69 FR 29879, May 26, 2004]
(one-inch) margin must be present on § 3.26 English language requirement.
all sides.
(b) For paper or facsimile submissions: The Office will accept and record
Either a copy of the original document non-English language documents only
or an extract of the original document if accompanied by an English trans-
must be submitted for recording. Only lation signed by the individual making
one side of each page may be used. The the translation.
paper size must be either 21.6 by 27.9 [62 FR 53202, Oct. 10, 1997]
cm (81⁄2 by 11 inches) or 21.0 by 29.7 cm
(DIN size A4), and in either case, a 2.5 § 3.27 Mailing address for submitting
cm (one-inch) margin must be present documents to be recorded.
on all sides. For paper submissions, the Documents and cover sheets sub-
paper used should be flexible, strong mitted by mail for recordation should
white, non-shiny, and durable. The Of- be addressed to Mail Stop Assignment
fice will not return recorded docu- Recordation Services, Director of the
218
United States Patent and Trademark or patent application number or each

Office, P.O. Box 1450, Alexandria, Vir- trademark registration number or pat-
ginia 22313–1450, unless they are filed ent against which the document is to
together with new applications. be recorded, or an indication that the
[69 FR 29879, May 26, 2004]
document is filed together with a pat-
ent application;
§ 3.28 Requests for recording. (5) The name and address of the party
to whom correspondence concerning
Each document submitted to the Of-
the request to record the document
fice for recording must include a single
should be mailed;
cover sheet (as specified in § 3.31) refer-
ring either to those patent applications (6) The date the document was exe-
and patents, or to those trademark ap- cuted;
plications and registrations, against (7) The signature of the party sub-
which the document is to be recorded. mitting the document. For an assign-
If a document to be recorded includes ment document or name change filed
interests in, or transactions involving, electronically, the person who signs
both patents and trademarks, then sep- the cover sheet must either:
arate patent and trademark cover (i) Place a symbol comprised of let-
sheets, each accompanied by a copy of ters, numbers, and/or punctuation
the document to be recorded, must be marks between forward slash marks
submitted. If a document to be re- (e.g., /Thomas O’Malley III/) in the sig-
corded is not accompanied by a com- nature block on the electronic submis-
pleted cover sheet, the document and sion; or
the incomplete cover sheet will be re- (ii) Sign the cover sheet using some
turned pursuant to § 3.51 for proper other form of electronic signature
completion, in which case the docu- specified by the Director.
ment and a completed cover sheet (8) For trademark assignments, the
should be resubmitted. entity and citizenship of the party re-
ceiving the interest. In addition, if the
[70 FR 56128, Sept. 26, 2005]
party receiving the interest is a domes-
COVER SHEET REQUIREMENTS tic partnership or domestic joint ven-
ture, the cover sheet must set forth the
§ 3.31 Cover sheet content. names, legal entities, and national citi-
(a) Each patent or trademark cover zenship (or the state or country of or-
sheet required by § 3.28 must contain: ganization) of all general partners or
(1) The name of the party conveying active members that compose the part-
the interest; nership or joint venture.
(2) The name and address of the party (b) A cover sheet should not refer to
receiving the interest; both patents and trademarks, since
(3) A description of the interest con- any information, including informa-
veyed or transaction to be recorded; tion about pending patent applications,
(4) Identification of the interests in- submitted with a request for recorda-
volved: tion of a document against a trade-
(i) For trademark assignments and mark application or trademark reg-
trademark name changes: Each trade- istration will become public record
mark registration number and each upon recordation.
trademark application number, if (c) Each patent cover sheet required
known, against which the Office is to by § 3.28 seeking to record a govern-
record the document. If the trademark mental interest as provided by § 3.11(b)
application number is not known, a must:
copy of the application or a reproduc- (1) Indicate that the document re-
tion of the trademark must be sub- lates to a Government interest; and
mitted, along with an estimate of the (2) Indicate, if applicable, that the
date that the Office received the appli- document to be recorded is not a docu-
cation; or ment affecting title (see § 3.41(b)).
(ii) For any other document affecting (d) Each trademark cover sheet re-
title to a trademark or patent application, quired by § 3.28 seeking to record a doc-

registration or patent: Each trademark ument against a trademark application
219
§ 3.34 37 CFR Ch. I (7–1–16 Edition)
or registration should include, in addi- utilize the assignment as an oath or

tion to the serial number or registra- declaration under § 1.63 of this chapter.
tion number of the trademark, identi-
[57 FR 29642, July 6, 1992, as amended at 62
fication of the trademark or a descrip- FR 53202, Oct. 10, 1997; 64 FR 48927, Sept. 8,
tion of the trademark, against which 1999; 67 FR 79523, Dec. 30, 2002; 69 FR 29879,
the Office is to record the document. May 26, 2004; 70 FR 1824, Jan. 11, 2005; 70 FR
(e) Each patent or trademark cover 56128, Sept. 26, 2005; 73 FR 67775, Nov. 17, 2008;
sheet required by § 3.28 should contain 77 FR 48825, Aug. 14, 2012; 78 FR 62408, Oct. 21,
the number of applications, patents or 2013]
registrations identified in the cover
sheet and the total fee. § 3.34 Correction of cover sheet errors.
(f) Each trademark cover sheet (a) An error in a cover sheet recorded
should include the citizenship of the pursuant to § 3.11 will be corrected only
party conveying the interest. if:
(g) The cover sheet required by § 3.28 (1) The error is apparent when the
seeking to record a joint research cover sheet is compared with the re-
agreement or an excerpt of a joint recorded document to which it pertains,
search agreement as provided by and
§ 3.11(c) must: (2) A corrected cover sheet is filed for
(1) Identify the document as a ‘‘joint recordation.
research agreement’’ (in the space pro- (b) The corrected cover sheet must be
vided for the description of the interest accompanied by a copy of the docu-
conveyed or transaction to be recorded ment originally submitted for record-
if using an Office-provided form); ing and by the recording fee as set
(2) Indicate the name of the owner of forth in § 3.41.
the application or patent (in the space
[69 FR 29879, May 26, 2004]
provided for the name and address of
the party receiving the interest if FEES
using an Office-provided form);
(3) Indicate the name of each other § 3.41 Recording fees.
party to the joint research agreement
(a) All requests to record documents
party (in the space provided for the
name of the party conveying the inter- must be accompanied by the appro-
est if using an Office-provided form); priate fee. Except as provided in para-
and graph (b) of this section, a fee is re-
(4) Indicate the date the joint required for each application, patent and
search agreement was executed. registration against which the docu-
ment is recorded as identified in the
(h) The assignment cover sheet re-
quired by § 3.28 for a patent application cover sheet. The recording fee is set in
or patent will be satisfied by the Pat- § 1.21(h) of this chapter for patents and
ent Law Treaty Model International in § 2.6(b)(6) of this chapter for trade-
Request for Recordation of Change in marks.
Applicant or Owner Form, Patent Law (b) No fee is required for each patent
Treaty Model International Request application and patent against which a
for Recordation of a License/Cancella- document required by Executive Order
tion of the Recordation of a License 9424 is to be filed if:
Form, Patent Law Treaty Model Cer- (1) The document does not affect title
tificate of Transfer Form or Patent and is so identified in the cover sheet
Law Treaty Model International Re- (see § 3.31(c)(2)); and
quest for Recordation of a Security In- (2) The document and cover sheet are
terest/Cancellation of the Recordation either: Faxed or electronically sub-
of a Security Interest Form, as applica- mitted as prescribed by the Director,
ble, except where the assignment is or mailed to the Office in compliance
also an oath or declaration under § 1.63 with § 3.27.
of this chapter. An assignment cover

sheet required by § 3.28 must contain a
FR 29879, May 26, 2004]
conspicuous indication of an intent to
220
DATE AND EFFECT OF RECORDING as absolute assignments for Office pur-

poses until cancelled with the written
§ 3.51 Recording date. consent of all parties or by the decree
The date of recording of a document of a court of competent jurisdiction.
is the date the document meeting the The Office does not determine whether
requirements for recording set forth in such conditions have been fulfilled.
this part is filed in the Office. A docu-
§ 3.58 Governmental registers.
ment which does not comply with the
identification requirements of § 3.21 (a) The Office will maintain a De-
will not be recorded. Documents not partmental Register to record govern-
meeting the other requirements for re- mental interests required to be re-
cording, for example, a document sub- corded by Executive Order 9424. This
mitted without a completed cover Departmental Register will not be open
sheet or without the required fee, will to public inspection but will be avail-
be returned for correction to the sender able for examination and inspection by
where a correspondence address is duly authorized representatives of the
available. The returned papers, Government. Governmental interests
stamped with the original date of re- recorded on the Departmental Register
ceipt by the Office, will be accom- will be available for public inspection
panied by a letter which will indicate as provided in § 1.12.
that if the returned papers are cor- (b) The Office will maintain a Secret
rected and resubmitted to the Office Register to record governmental inter-
within the time specified in the letter, ests required to be recorded by Execu-
the Office will consider the original tive Order 9424. Any instrument to be
date of filing of the papers as the date recorded will be placed on this Secret
of recording of the document. The pro- Register at the request of the depart-
cedure set forth in § 1.8 or § 1.10 of this ment or agency submitting the same.
chapter may be used for resubmissions No information will be given con-
of returned papers to have the benefit cerning any instrument in such record
of the date of deposit in the United or register, and no examination or in-
States Postal Service. If the returned spection thereof or of the index thereto
papers are not corrected and resub- will be permitted, except on the writ-
mitted within the specified period, the ten authority of the head of the depart-
date of filing of the corrected papers ment or agency which submitted the
will be considered to be the date of re- instrument and requested secrecy, and
cording of the document. The specified the approval of such authority by the
period to resubmit the returned papers Director. No instrument or record
will not be extended. other than the one specified may be ex-
amined, and the examination must
[62 FR 53203, Oct. 10, 1997] take place in the presence of a des-
ignated official of the Patent and
§ 3.54 Effect of recording. Trademark Office. When the depart-
The recording of a document pursu- ment or agency which submitted an in-
ant to § 3.11 is not a determination by strument no longer requires secrecy
the Office of the validity of the docu- with respect to that instrument, it
ment or the effect that document has must be recorded anew in the Depart-
on the title to an application, a patent, mental Register.
or a registration. When necessary, the [62 FR 53203, Oct. 10, 1997]
Office will determine what effect a doc-
ument has, including whether a party DOMESTIC REPRESENTATIVE
has the authority to take an action in
a matter pending before the Office. § 3.61 Domestic representative.
If the assignee of a patent, patent ap-
§ 3.56 Conditional assignments. plication, trademark application or
Assignments which are made condi- trademark registration is not domi-
tional on the performance of certain ciled in the United States, the assignee
acts or events, such as the payment of may designate a domestic representa-
money or other condition subsequent, tive in a document filed in the United

if recorded in the Office, are regarded States Patent and Trademark Office.
221
§ 3.71 37 CFR Ch. I (7–1–16 Edition)
The designation should state the name plemental examination or reexamina-

and address of a person residing within tion proceeding, by filing a statement
the United States on whom may be in compliance with § 3.73(c) that is
served process or notice of proceedings signed by a party who is authorized to
affecting the application, patent or act on behalf of the assignee.
registration or rights thereunder. (d) Trademarks. The assignee of a
[67 FR 79522, Dec. 30, 2002] trademark application or registration
may prosecute a trademark applica-
ACTION TAKEN BY ASSIGNEE tion, submit documents to maintain a
trademark registration, or file papers
§ 3.71 Prosecution by assignee. against a third party in reliance on the
(a) Patents—conducting of prosecution. assignee’s trademark application or
One or more assignees as defined in registration, to the exclusion of the
paragraph (b) of this section may con- original applicant or previous assignee.
duct prosecution of a national patent The assignee must establish ownership
application as the applicant under § 1.46 in compliance with § 3.73(b).
of this title, or conduct prosecution of
a supplemental examination or reex- FR 48825, Aug. 14, 2012]
amination proceeding, to the exclusion
of the inventor or previous applicant or § 3.73 Establishing right of assignee to
patent owner. Conflicts between pur- take action.
ported assignees are handled in accord-
ance with § 3.73(c)(3). (a) The original applicant is pre-
(b) Patents—assignee(s) who can pros- sumed to be the owner of an applica-
ecute. The assignee(s) who may conduct tion for an original patent, and any
either the prosecution of a national ap- patent that may issue therefrom, un-
plication for patent as the applicant less there is an assignment. The origi-
under § 1.46 of this title or a supple- nal applicant is presumed to be the
mental examination or reexamination owner of a trademark application or
proceeding are: registration, unless there is an assign-
(1) A single assignee. An assignee of ment.
the entire right, title and interest in (b) In order to request or take action
the application or patent, or in a trademark matter, the assignee
(2) Partial assignee(s) together or with must establish its ownership of the
inventor(s). All partial assignees, or all trademark property of paragraph (a) of
partial assignees and inventors who this section to the satisfaction of the
have not assigned their right, title and Director. The establishment of owner-
interest in the application or patent, ship by the assignee may be combined
who together own the entire right, with the paper that requests or takes
title and interest in the application or the action. Ownership is established by
patent. A partial assignee is any as- submitting to the Office a signed state-
signee having less than the entire ment identifying the assignee, accom-
right, title and interest in the applica- panied by either:
tion or patent. The word ‘‘assignee’’ as (1) Documentary evidence of a chain
used in this chapter means with re- of title from the original owner to the
spect to patent matters the single as- assignee (e.g., copy of an executed as-
signee of the entire right, title and in- signment). The documents submitted
terest in the application or patent if to establish ownership may be required
there is such a single assignee, or all of to be recorded pursuant to § 3.11 in the
the partial assignees, or all of the par- assignment records of the Office as a
tial assignee and inventors who have condition to permitting the assignee to
not assigned their interest in the appli- take action in a matter pending before
cation or patent, who together own the the Office; or
entire right, title and interest in the (2) A statement specifying where doc-
application or patent. umentary evidence of a chain of title
(c) Patents—Becoming of record. An as- from the original owner to the assignee
signee becomes of record as the appli- is recorded in the assignment records
cant in a national patent application of the Office (e.g., reel and frame num-
under § 1.46 of this title, and in a sup- ber).
222
(c)(1) In order to request or take ac- thorized to act on behalf of the as-
tion in a patent matter, an assignee signee by:
who is not the original applicant must (1) Including a statement that the
establish its ownership of the patent person signing the submission is au-
property of paragraph (a) of this sec- thorized to act on behalf of the as-
tion to the satisfaction of the Director. signee;
The establishment of ownership by the (2) Being signed by a person having
assignee may be combined with the apparent authority to sign on behalf of
paper that requests or takes the ac- the assignee; or
tion. Ownership is established by sub- (3) For patent matters only, being
mitting to the Office a signed state-
signed by a practitioner of record.
ment identifying the assignee, accom-
panied by either: [77 FR 48825, Aug. 14, 2012]
(i) Documentary evidence of a chain
of title from the original owner to the ISSUANCE TO ASSIGNEE
assignee (e.g., copy of an executed as-
signment). The submission of the docu- § 3.81 Issue of patent to assignee.
mentary evidence must be accom- (a) With payment of the issue fee: An
panied by a statement affirming that application may issue in the name of
the documentary evidence of the chain the assignee consistent with the appli-
of title from the original owner to the cation’s assignment where a request
assignee was or concurrently is being for such issuance is submitted with
submitted for recordation pursuant to payment of the issue fee, provided the
§ 3.11; or assignment has been previously re-
(ii) A statement specifying where corded in the Office. If the assignment
documentary evidence of a chain of has not been previously recorded, the
title from the original owner to the as- request must state that the document
signee is recorded in the assignment has been filed for recordation as set
records of the Office (e.g., reel and forth in § 3.11.
frame number). (b) After payment of the issue fee: Any
(2) If the submission is by an assignee request for issuance of an application
of less than the entire right, title and in the name of the assignee submitted
interest (e.g., more than one assignee after the date of payment of the issue
exists) the Office may refuse to accept fee, and any request for a patent to be
the submission as an establishment of
corrected to state the name of the as-
ownership unless:
signee, must state that the assignment
(i) Each assignee establishes the ex- was submitted for recordation as set
tent (by percentage) of its ownership
forth in § 3.11 before issuance of the
interest, so as to account for the entire
patent, and must include a request for
right, title and interest in the applica-
a certificate of correction under § 1.323
tion or patent by all parties including
inventors; or of this chapter (accompanied by the fee
set forth in § 1.20(a)) and the processing
(ii) Each assignee submits a state-
ment identifying the parties including fee set forth in § 1.17(i) of this chapter.
inventors who together own the entire (c) Partial assignees. (1) If one or more
right, title and interest and stating assignee, together with one or more in-
that all the identified parties own the ventor, holds the entire right, title,
entire right, title and interest. and interest in the application, the
(3) If two or more purported assignees patent may issue in the names of the
file conflicting statements under para- assignee and the inventor.
graph (c)(1) of this section, the Direc- (2) If multiple assignees hold the en-
tor will determine which, if any, pur- tire right, title, and interest to the ex-
ported assignee will be permitted to clusion of all the inventors, the patent
control prosecution of the application. may issue in the names of the multiple
(d) The submission establishing own- assignees.
ership under paragraph (b) or (c) of this
[69 FR 29879, May 26, 2004]

section must show that the person
signing the submission is a person au-
223
§ 3.85 37 CFR Ch. I (7–1–16 Edition)
§ 3.85 Issue of registration to assignee. tising in any mass media as providing

The certificate of registration may such services, but does not include—
be issued to the assignee of the appli- (1) Any department or agency of the
cant, or in a new name of the appli- Federal Government or of a State or
cant, provided that the party files a local government;
written request in the trademark appli- (2) Any nonprofit, charitable, sci-
cation by the time the application is entific, or educational organization
being prepared for issuance of the cer- qualified under applicable State law or
tificate of registration, and the appro- described under section 170(b)(1)(A) of
priate document is recorded in the Of- the Internal Revenue Code of 1986;
fice. If the assignment or name change (3) Any person or entity involved in
document has not been recorded in the the evaluation to determine commer-
Office, then the written request must cial potential of, or offering to license
state that the document has been filed or sell, a utility patent or a previously
for recordation. The address of the as- filed nonprovisional utility patent ap-
signee must be made of record in the plication;
application file. (4) Any party participating in a
transaction involving the sale of the
stock or assets of a business; or
PART 4—COMPLAINTS REGARDING (5) Any party who directly engages in
INVENTION PROMOTERS the business of retail sales of products
or the distribution of products.
Sec.
(b) Customer means any individual
4.1 Complaints regarding invention pro-
moters. who enters into a contract with an in-
4.2 Definitions. vention promoter for invention pro-
4.3 Submitting complaints. motion services.
4.4 Invention promoter reply. (c) Contract for Invention Promotion
4.5 Notice by publication. Services means a contract by which an
4.6 Attorneys and Agents. invention promoter undertakes inven-
AUTHORITY: 35 U.S.C. 2(b)(2) and 297. tion promotion services for a customer.
SOURCE: 65 FR 3129, Jan. 20, 2000, unless (d) Invention Promotion Services means
otherwise noted. the procurement or attempted procure-
ment for a customer of a firm, corpora-
§ 4.1 Complaints regarding invention tion, or other entity to develop and
promoters. market products or services that in-
These regulations govern the Patent clude the invention of the customer.
and Trademark Office’s (Office) respon-
sibilities under the Inventors’ Rights § 4.3 Submitting complaints.
Act of 1999, which can be found in the (a) A person may submit a complaint
U.S. Code at 35 U.S.C. 297. The Act re- concerning an invention promoter with
quires the Office to provide a forum for the Office. A person submitting a com-
the publication of complaints con- plaint should understand that the com-
cerning invention promoters. The Of- plaint may be forwarded to the inven-
fice will not conduct any independent tion promoter and may become pub-
investigation of the invention pro- licly available. The Office will not ac-
moter. Although the Act provides addi- cept any complaint that requests that
tional civil remedies for persons in- it be kept confidential.
jured by invention promoters, those (b) A complaint must be clearly
remedies must be pursued by the in- marked, or otherwise identified, as a
jured party without the involvement of complaint under these rules. The com-
the Office. plaint must include:
(1) The name and address of the com-
§ 4.2 Definitions. plainant;
(a) Invention Promoter means any per- (2) The name and address of the in-
son, firm, partnership, corporation, or vention promoter;
other entity who offers to perform or (3) The name of the customer;
performs invention promotion services (4) The invention promotion services
for, or on behalf of, a customer, and offered or performed by the invention

who holds itself out through adver- promoter;
224
(5) The name of the mass media in (4) The title or authority of the indi-
which the invention promoter adver- vidual signing the response.
tised providing such services;
(6) An explanation of the relationship § 4.5 Notice by publication.
between the customer and the inven- If the copy of the complaint that is
tion promoter; and mailed to the invention promoter is re-
(7) A signature of the complainant. turned undelivered, then the USPTO
(c) The complaint should fairly sum- will primarily publish a Notice of Com-
marize the action of the invention pro- plaint Received on the USPTO’s Inter-
moter about which the person com- net home page at http://www.uspto.gov.
plains. Additionally, the complaint Only where the USPTO’s Web site is
should include names and addresses of unavailable for publication will the
persons believed to be associated with USPTO publish the Notice of Com-
the invention promoter. Complaints, plaint in the Official Gazette and/or the
and any replies, must be addressed to: FEDERAL REGISTER. The invention pro-
Mail Stop 24, Commissioner for Pat- moter will be given 30 days from such
ents, P.O. Box 1450, Alexandria, Vir-
notice to submit a reply to the Notice
ginia 22313–1450.
of Complaint. If the USPTO does not
(d) Complaints that do not provide
receive a reply from the invention pro-
the information requested in para-
moter within 30 days, the complaint
graphs (b) and (c) of this section will be
alone will become publicly available.
returned. If complainant’s address is
not provided, the complaint will be de- [68 FR 9553, Feb. 28, 2003]
stroyed.
(e) No originals of documents should § 4.6 Attorneys and Agents.
be included with the complaint. Complaints against registered patent
(f) A complaint can be withdrawn by attorneys and agents will not be treat-
the complainant or the named cused under this section, unless a com-
tomer at any time prior to its publica- plaint fairly demonstrates that inven-
tion. tion promotion services are involved.
[65 FR 3129, Jan. 20, 2000, as amended at 68 Persons having complaints about reg-
FR 14338, Mar. 25, 2003] istered patent attorneys or agents
should contact the Office of Enroll-
§ 4.4 Invention promoter reply. ment and Discipline at Mail Stop OED,
(a) If a submission appears to meet Director of the United States Patent
the requirements of a complaint, the and Trademark Office, PO Box 1450, Al-
invention promoter named in the com- exandria, Virginia 22313–1450, and the
plaint will be notified of the complaint attorney discipline section of the at-
and given 30 days to respond. The in- torney’s state licensing bar if an attor-
vention promoter’s response will be ney is involved.
made available to the public along [68 FR 14338, Mar. 25, 2003]
with the complaint. If the invention
promoter fails to reply within the 30-
day time period set by the Office, the PART 5—SECRECY OF CERTAIN IN-
complaint will be made available to VENTIONS AND LICENSES TO EX-
the public. Replies sent after the com- PORT AND FILE APPLICATIONS IN
plaint is made available to the public FOREIGN COUNTRIES
will also be published.
(b) A response must be clearly SECRECY ORDERS
marked, or otherwise identified, as a
Sec.
response by an invention promoter.
5.1 Applications and correspondence involv-
The response must contain: ing national security.
(1) The name and address of the in- 5.2 Secrecy order.
vention promoter; 5.3 Prosecution of application under secrecy
(2) A reference to a complaint for- orders; withholding patent.
warded to the invention promoter or a 5.4 Petition for rescission of secrecy order.
complaint previously published;
5.5 Permit to disclose or modification of se-

(3) The name of the individual sign- crecy order.
ing the response; and 5.6–5.8 [Reserved]
225
§ 5.1 37 CFR Ch. I (7–1–16 Edition)
LICENSES FOR FOREIGN EXPORTING AND FILING country, foreign patent office, foreign
5.11 License for filing in, or exporting to, a patent agency, or international agency
foreign country an application on an in- (other than the United States Patent
vention made in the United States or and Trademark Office acting as a Re-
technical data relating thereto. ceiving Office for international appli-
5.12 Petition for license. cations (35 U.S.C. 361, § 1.412) or as an
5.13 Petition for license; no corresponding
application.
office of indirect filing for inter-
5.14 Petition for license; corresponding U.S. national design applications (35 U.S.C.
application. 382, § 1.1002)) any of the following: An
5.15 Scope of license. application for patent, international
5.16–5.17 [Reserved] application, international design appli-
5.18 Arms, ammunition, and implements of cation, or application for the registra-
war. tion of a utility model, industrial de-
5.19 Export of technical data.
5.20 Export of technical data relating to sign, or model.
sensitive nuclear technology. (c) Patent applications and docu-
5.25 Petition for retroactive license. ments relating thereto that are na-
tional security classified (see § 1.9(i) of
GENERAL
this chapter) and contain authorized
5.31–5.33 [Reserved] national security markings (e.g.,
AUTHORITY: 35 U.S.C. 2(b)(2), 41, 181–188, as ‘‘Confidential,’’ ‘‘Secret’’ or ‘‘Top Se-
amended by the Patent Law Foreign Filing cret’’) are accepted by the Office. Na-
Amendments Act of 1988, Pub. L. 100–418, 102 tional security classified documents
Stat. 1567; the Arms Export Control Act, as filed in the Office must be either hand-
amended, 22 U.S.C. 2571 et seq.; the Atomic carried to Licensing and Review or
Energy Act of 1954, as amended, 42 U.S.C.
mailed to the Office in compliance with
2011 et seq.; the Nuclear Non Proliferation
Act of 1978; 22 U.S.C. 3201 et seq.; and the del- paragraph (a) of this section.
egations in the regulations under these Acts (d) The applicant in a national secu-
to the Director (15 CFR 734.3(b)(1)(v), 22 CFR rity classified patent application must
125.04, and 10 CFR 810.7), as well as the Ex- obtain a secrecy order pursuant to
port Administration Act of 1979, 50 U.S.C. § 5.2(a). If a national security classified
app. 2401 et seq.; the International Emer- patent application is filed without a
gency Economic Powers Act, 50 U.S.C. 1701 et
seq.; E.O. 12938, 59 FR 59099, 3 CFR, 1994
notification pursuant to § 5.2(a), the Of-
Comp., p. 950; E.O. 13222, 66 FR 44025, 3 CFR, fice will set a time period within which
2001 Comp., p. 783; Notice of August 2, 2005, 70 either the application must be declas-
FR 45273 (August 5, 2005). sified, or the application must be
SOURCE: 24 FR 10381, Dec. 22, 1959, unless placed under a secrecy order pursuant
otherwise noted. to § 5.2(a), or the applicant must submit
evidence of a good faith effort to ob-
EDITORIAL NOTE: Nomenclature changes to
part 5 appear at 68 FR 14338, Mar. 25, 2003.
tain a secrecy order pursuant to § 5.2(a)
from the relevant department or agen-
SECRECY ORDERS cy in order to prevent abandonment of
the application. If evidence of a good
§ 5.1 Applications and correspondence faith effort to obtain a secrecy order
involving national security. pursuant to § 5.2(a) from the relevant
(a) All correspondence in connection department or agency is submitted by
with this part, including petitions, the applicant within the time period
should be addressed to: Mail Stop L&R, set by the Office, but the application
Commissioner for Patents, P.O. Box has not been declassified or placed
1450, Alexandria, Virginia 22313–1450. under a secrecy order pursuant to
(b) Definitions. (1) Application as used § 5.2(a), the Office will again set a time
in this part includes provisional appli- period within which either the applica-
cations (§ 1.9(a)(2) of this chapter), non- tion must be declassified, or the appli-
provisional applications (§ 1.9(a)(3)), cation must be placed under a secrecy
international applications (§ 1.9(b)), or order pursuant to § 5.2(a), or the appli-
international design applications cant must submit evidence of a good
(§ 1.9(n)). faith effort to again obtain a secrecy
(2) Foreign application as used in this order pursuant to § 5.2(a) from the rel-
part includes, for filing in a foreign evant department or agency in order to
226
prevent abandonment of the applica- of the subject matter of an application

tion. under a secrecy order pursuant to para-
(e) An application will not be pub- graph (a) of this section must either be
lished under § 1.211 of this chapter or hand-carried to Licensing and Review
allowed under § 1.311 of this chapter if or mailed to the Office in compliance
publication or disclosure of the appli- with § 5.1(a).
cation would be detrimental to na- [24 FR 10381, Dec. 22, 1959, as amended at 62
tional security. An application under FR 53203, Oct. 10, 1997; 65 FR 54683, Sept. 8,
national security review will not be 2000]
published at least until six months
from its filing date or three months § 5.3 Prosecution of application under
from the date the application was re- secrecy orders; withholding patent.
ferred to a defense agency, whichever is Unless specifically ordered otherwise,
later. A national security classified action on the application by the Office
patent application will not be pub- and prosecution by the applicant will
lished under § 1.211 of this chapter or proceed during the time an application
allowed under § 1.311 of this chapter is under secrecy order to the point in-
until the application is declassified and dicated in this section:
any secrecy order under § 5.2(a) has (a) National applications under se-
been rescinded. crecy order which come to a final re-
(f) Applications on inventions made jection must be appealed or otherwise
outside the United States and on in- prosecuted to avoid abandonment. Ap-
ventions in which a U.S. Government peals in such cases must be completed
defense agency has a property interest by the applicant but unless otherwise
will not be made available to defense specifically ordered by the Commis-
agencies. sioner for Patents will not be set for
[65 FR 54682, Sept. 8, 2000, as amended at 65 hearing until the secrecy order is re-
FR 57060, Sept. 20, 2000; 68 FR 14338, Mar. 25, moved.
2003; 69 FR 29880, May 26, 2004; 80 FR 17969, (b) An interference or derivation will
Apr. 2, 2015] not be instituted involving a national
application under secrecy order. An ap-
§ 5.2 Secrecy order. plicant whose application is under se-
(a) When notified by the chief officer crecy order may suggest an inter-
of a defense agency that publication or ference (§ 41.202(a) of this title), but the
disclosure of the invention by the Office will not act on the request while
granting of a patent would be detri- the application remains under a se-
mental to the national security, an crecy order.
order that the invention be kept secret (c) When the national application is
will be issued by the Commissioner for found to be in condition for allowance
Patents. except for the secrecy order the appli-
(b) Any request for compensation as cant and the agency which caused the
provided in 35 U.S.C. 183 must not be secrecy order to be issued will be noti-
made to the Patent and Trademark Of- fied. This notice (which is not a notice
fice, but directly to the department or of allowance under § 1.311 of this chap-
agency which caused the secrecy order ter) does not require reply by the appli-
to be issued. cant and places the national applica-
(c) An application disclosing any sig- tion in a condition of suspension until
nificant part of the subject matter of the secrecy order is removed. When the
an application under a secrecy order secrecy order is removed the Patent
pursuant to paragraph (a) of this sec- and Trademark Office will issue a no-
tion also falls within the scope of such tice of allowance under § 1.311 of this
secrecy order. Any such application chapter, or take such other action as
that is pending before the Office must may then be warranted.
be promptly brought to the attention (d) International applications and
of Licensing and Review, unless such international design applications under
application is itself under a secrecy secrecy order will not be mailed, deliv-
order pursuant to paragraph (a) of this ered, or otherwise transmitted to the
section. Any subsequently filed appli- international authorities or the appli-

cation containing any significant part cant. International applications under
227
§ 5.4 37 CFR Ch. I (7–1–16 Edition)
secrecy order will be processed up to (b) Petitions for a permit or modi-

the point where, if it were not for the fication must fully recite the reason or
secrecy order, record and search copies purpose for the proposed disclosure.
would be transmitted to the inter- Where any proposed disclosee is known
national authorities or the applicant. to be cleared by a defense agency to re-
(Pub. L. 94–131, 89 Stat. 685) ceive classified information, adequate
explanation of such clearance should be
[43 FR 20470, May 11, 1978, as amended at 53 made in the petition including the
FR 23736, June 23, 1988; 62 FR 53203, Oct. 10,
name of the agency or department
1997; 69 FR 50002, Aug. 12, 2004; 77 FR 46629,
Aug. 6, 2012; 80 FR 17969, Apr. 2, 2015] granting the clearance and the date
and degree thereof. The petition must
§ 5.4 Petition for rescission of secrecy be filed in duplicate.
order. (c) In a petition for modification of a
(a) A petition for rescission or re- secrecy order to permit filing abroad,
moval of a secrecy order may be filed all countries in which it is proposed to
by, or on behalf of, any principal af- file must be made known, as well as all
fected thereby. Such petition may be in attorneys, agents and others to whom
letter form, and it must be in dupli- the material will be consigned prior to
cate. being lodged in the foreign patent of-
(b) The petition must recite any and fice. The petition should include a
all facts that purport to render the statement vouching for the loyalty and
order ineffectual or futile if this is the integrity of the proposed disclosees and
basis of the petition. When prior publi- where their clearance status in this or
cations or patents are alleged the peti- the foreign country is known all de-
tion must give complete data as to tails should be given.
such publications or patents and (d) Consent to the disclosure of sub-
should be accompanied by copies there- ject matter from one application under
of. secrecy order may be deemed to be con-
(c) The petition must identify any sent to the disclosure of common sub-
contract between the Government and ject matter in other applications under
any of the principals, under which the secrecy order so long as not taken out
subject matter of the application or of context in a manner disclosing ma-
any significant part thereof was devel- terial beyond the modification granted
oped, or to which the subject matter is in the first application.
otherwise related. If there is no such (e) Organizations requiring consent
contract, the petition must so state. for disclosure of applications under se-
(d) Appeal to the Secretary of Com- crecy order to persons or organizations
merce, as provided by 35 U.S.C. 181, in connection with repeated routine op-
from a secrecy order cannot be taken eration may petition for such consent
until after a petition for rescission of
in the form of a general permit. To be
the secrecy order has been made and
successful such petitions must ordi-
denied. Appeal must be taken within
narily recite the security clearance
sixty days from the date of the denial,
and the party appealing, as well as the status of the disclosees as sufficient for
department or agency which caused the the highest classification of material
order to be issued, will be notified of that may be involved.
the time and place of hearing. [24 FR 10381, Dec. 22, 1959, as amended at 62
[24 FR 10381, Dec. 22, 1959, as amended at 62 FR 53204 Oct. 10, 1997]
FR 53204, Oct. 10, 1997]
§ 5.5 Permit to disclose or modification

of secrecy order.
(a) Consent to disclosure, or to the
filing of an application abroad, as pro-
vided in 35 U.S.C. 182, shall be made by
a ‘‘permit’’ or ‘‘modification’’ of the se-

crecy order.
228
§§ 5.6–5.8 [Reserved] in paragraphs (a) or (b) of this section,

or on an invention not made in the
LICENSES FOR FOREIGN EXPORTING AND United States, the export regulations
FILING contained in 22 CFR parts 120 through
130 (International Traffic in Arms Reg-
§ 5.11 License for filing in, or export- ulations of the Department of State),
ing to, a foreign country an applica-
tion on an invention made in the 15 CFR parts 730 through 774 (Export
United States or technical data re- Administration Regulations of the Bu-
lating thereto. reau of Industry and Security, Depart-
(a) A license from the Commissioner ment of Commerce), and 10 CFR part
for Patents under 35 U.S.C. 184 is re- 810 (Assistance to Foreign Atomic En-
quired before filing any application for ergy Activities Regulations of the De-
patent including any modifications, partment of Energy) must be complied
amendments, or supplements thereto with unless a license is not required be-
or divisions thereof or for the registra- cause a United States application was
tion of a utility model, industrial de- on file at the time of export for at least
sign, or model, in a foreign country, six months without a secrecy order
foreign patent office, foreign patent under § 5.2 being placed thereon. The
agency, or any international agency term ‘‘exported’’ means export as it is
(other than the United States Patent defined in 22 CFR part 120, 15 CFR part
and Trademark Office acting as a Re- 734, and activities covered by 10 CFR
ceiving Office for international appli- part 810.
cations (35 U.S.C. 361, § 1.412) or as an (d) If a secrecy order has been issued
office of indirect filing for inter- under § 5.2, an application cannot be ex-
national design applications (35 U.S.C. ported to, or filed in, a foreign country
382, § 1.1002)), if the invention was made (including an international agency in a
in the United States, and: foreign country), except in accordance
(1) An application on the invention with § 5.5.
has been filed in the United States less (e) No license pursuant to paragraph
than six months prior to the date on (a) of this section is required:
which the application is to be filed; or (1) If the invention was not made in
(2) No application on the invention the United States, or
has been filed in the United States. (2) If the corresponding United States
(b) The license from the Commis- application is not subject to a secrecy
sioner for Patents referred to in para- order under § 5.2, and was filed at least
graph (a) of this section would also au- six months prior to the date on which
thorize the export of technical data the application is filed in a foreign
abroad for purposes relating to the country, or
preparation, filing or possible filing (3) For subsequent modifications,
and prosecution of a foreign applica- amendments and supplements con-
tion without separately complying taining additional subject matter to, or
with the regulations contained in 22 divisions of, a foreign patent applica-
CFR parts 120 through 130 (Inter- tion if:
national Traffic in Arms Regulations (i) A license is not, or was not, re-
of the Department of State), 15 CFR quired under paragraph (e)(2) of this
parts 730 through 774 (Export Adminis- section for the foreign application;
tration Regulations of the Bureau of (ii) The corresponding United States
Industry and Security, Department of application was not required to be
Commerce), and 10 CFR part 810 (As- made available for inspection under 35
sistance to Foreign Atomic Energy Ac- U.S.C. 181; and
tivities Regulations of the Department (iii) Such modifications, amend-
of Energy). ments, and supplements do not, or did
(c) Where technical data in the form not, change the general nature of the
of a patent application, or in any form, invention in a manner which would re-
are being exported for purposes related quire any corresponding United States
to the preparation, filing or possible application to be or have been avail-
filing and prosecution of a foreign ap- able for inspection under 35 U.S.C. 181.
plication, without the license from the (f) A license pursuant to paragraph
Commissioner for Patents referred to (a) of this section can be revoked at
229
§ 5.12 37 CFR Ch. I (7–1–16 Edition)
any time upon written notification by and title, but a copy of the material
the United States Patent and Trade- upon which the license is desired is not
mark Office. An authorization to file a required. The subject matter licensed
foreign application resulting from the will be measured by the disclosure of
passage of six months from the date of the United States application.
filing of a United States patent appli- (b) Two or more United States appli-
cation may be revoked by the imposi- cations should not be referred to in the
tion of a secrecy order. same petition for license unless they
[49 FR 13461, Apr. 4, 1984, as amended at 56 are to be combined in the foreign or
FR 1928, Jan. 18, 1991; 62 FR 53204, Oct. 10, international application, in which
1997; 70 FR 56129, Sept. 26, 2005; 80 FR 17969, event the petition should so state and
Apr. 2, 2015] the identification of each United
States application should be in sepa-
§ 5.12 Petition for license.
rate paragraphs.
(a) Filing of an application on an in- (c) Where the application to be filed
vention made in the United States will or exported abroad contains matter not
be considered to include a petition for disclosed in the United States applica-
license under 35 U.S.C. 184 for the sub- tion or applications, including the case
ject matter of the application. The fil- where the combining of two or more
ing receipt or other official notice will United States applications introduces
indicate if a license is granted. If the subject matter not disclosed in any of
initial automatic petition is not grant- them, a copy of the application as it is
ed, a subsequent petition may be filed to be filed or exported abroad, must be
under paragraph (b) of this section.
furnished with the petition. If, how-
(b) A petition for license must in-
ever, all new matter in the application
clude the fee set forth in § 1.17(g) of this
to be filed or exported is readily identi-
chapter, the petitioner’s address, and
fiable, the new matter may be sub-
full instructions for delivery of the re-
mitted in detail and the remainder by
quested license when it is to be deliv-
reference to the pertinent United
ered to other than the petitioner. The
States application or applications.
petition should be presented in letter
form. (Pub. L. 94–131, 89 Stat. 685)
(35 U.S.C. 6, Pub. L. 97–247) [43 FR 20471, May 11, 1978, as amended at 49
[48 FR 2714, Jan. 20, 1983, as amended at 49 FR 13462, Apr. 4, 1984; 62 FR 53204, Oct. 10,
FR 13462, Apr. 4, 1984; 62 FR 53204, Oct. 10, 1997; 80 FR 17970, Apr. 2, 2015]
1997; 65 FR 54683, Sept. 8, 2000; 69 FR 56546,
Sept. 21, 2004; 80 FR 17970, Apr. 2, 2015] § 5.15 Scope of license.
(a) Applications or other materials
§ 5.13 Petition for license; no cor- reviewed pursuant to §§ 5.12 through
responding application.
5.14, which were not required to be
If no corresponding national, inter- made available for inspection by de-
national design, or international appli- fense agencies under 35 U.S.C. 181, will
cation has been filed in the United be eligible for a license of the scope
States, the petition for license under provided in this paragraph. This license
§ 5.12(b) must also be accompanied by a permits subsequent modifications,
legible copy of the material upon amendments, and supplements con-
which a license is desired. This copy taining additional subject matter to, or
will be retained as a measure of the li- divisions of, a foreign application, if
cense granted. such changes to the application do not
[80 FR 17970, Apr. 2, 2015] alter the general nature of the inven-
tion in a manner that would require
§ 5.14 Petition for license; cor- the United States application to have
responding U.S. application. been made available for inspection
(a) When there is a corresponding under 35 U.S.C. 181. Grant of this li-
United States application on file, a pe- cense authorizes the export and filing
tition for license under § 5.12(b) must of an application in a foreign country
also identify this application by appli- or to any foreign patent agency or

cation number, filing date, inventor, international patent agency when the
230
subject matter of the foreign applications, and supplements to, file divi-
tion corresponds to that of the domes- sions of, and take any action in the
tic application. This license includes prosecution of the foreign application,
authority: provided subject matter additional to
(1) To export and file all duplicate that covered by the license is not in-
and formal application papers in for- volved.
eign countries or with international (c) A license granted under § 5.12(b)
agencies; pursuant to § 5.13 or § 5.14 shall have the
(2) To make amendments, modifica- scope indicated in paragraph (a) of this
tions, and supplements, including divi- section, if it is so specified in the li-
sions, changes or supporting matter cense. A petition, accompanied by the
consisting of the illustration, exem- required fee (§ 1.17(g) of this chapter),
plification, comparison, or explanation may also be filed to change a license
of subject matter disclosed in the ap- having the scope indicated in para-
plication; and graph (b) of this section to a license
(3) To take any action in the prosecu- having the scope indicated in para-
tion of the foreign application provided graph (a) of this section. No such peti-
that the adding of subject matter or tion will be granted if the copy of the
taking of any action under paragraph material filed pursuant to § 5.13 or any
(a)(1) or (2) of this section does not corresponding United States applica-
change the general nature of the invention was required to be made available
tion disclosed in the application in a for inspection under 35 U.S.C. 181. The
manner that would require such appli- change in the scope of a license will be
cation to have been made available for effective as of the date of the grant of
inspection under 35 U.S.C. 181 by in- the petition.
cluding technical data pertaining to:
(d) In those cases in which no license
(i) Defense services or articles des-
is required to file or export the foreign
ignated in the United States Munitions
application, no license is required to
List applicable at the time of foreign
file papers in connection with the pros-
filing, the unlicensed exportation of
ecution of the foreign application not
which is prohibited pursuant to the
involving the disclosure of additional
Arms Export Control Act, as amended,
subject matter.
and 22 CFR parts 120 through 130; or
(ii) Restricted Data, sensitive nuclear (e) Any paper filed abroad or trans-
technology or technology useful in the mitted to an international patent
production or utilization of special nu- agency following the filing of a foreign
clear material or atomic energy, dis- application that changes the general
semination of which is subject to re- nature of the subject matter disclosed
strictions of the Atomic Energy Act of at the time of filing in a manner that
1954, as amended, and the Nuclear Non- would require such application to have
Proliferation Act of 1978, as imple- been made available for inspection
mented by the regulations for Assist- under 35 U.S.C. 181 or that involves the
ance to Foreign Atomic Energy Activi- disclosure of subject matter listed in
ties, 10 CFR part 810, in effect at the paragraph (a)(3)(i) or (ii) of this section
time of foreign filing. must be separately licensed in the
(b) Applications or other materials same manner as a foreign application.
which were required to be made avail- Further, if no license has been granted
able for inspection under 35 U.S.C. 181 under § 5.12(a) on filing the cor-
will be eligible for a license of the responding United States application,
scope provided in this paragraph. Grant any paper filed abroad or with an inter-
of this license authorizes the export national patent agency that involves
and filing of an application in a foreign the disclosure of additional subject
country or to any foreign patent agen- matter must be licensed in the same
cy or international patent agency. Fur- manner as a foreign application.
ther, this license includes authority to (f) Licenses separately granted in
export and file all duplicate and formal connection with two or more United
papers in foreign countries or with for- States applications may be exercised
eign and international patent agencies by combining or dividing the disclo-

and to make amendments, modifica- sures, as desired, provided:
231
§§ 5.16–5.17 37 CFR Ch. I (7–1–16 Edition)
(1) Subject matter which changes the § 5.19 Export of technical data.
general nature of the subject matter (a) Under regulations (15 CFR
disclosed at the time of filing or which 734.3(b)(1)(v)) established by the De-
involves subject matter listed in para- partment of Commerce, a license is not
graph (a)(3) (i) or (ii) of this section is required in any case to file a patent ap-
not introduced, and plication or part thereof in a foreign
(2) In the case where at least one of country if the foreign filing is in ac-
the licenses was obtained under cordance with the regulations (§§ 5.11
§ 5.12(b), additional subject matter is through 5.25) of the U.S. Patent and
not introduced. Trademark Office.
(g) A license does not apply to acts (b) An export license is not required
done before the license was granted. for data contained in a patent applica-
See § 5.25 for petitions for retroactive tion prepared wholly from foreign-ori-
licenses. gin technical data where such applica-
tion is being sent to the foreign inven-
[49 FR 13462, Apr. 4, 1984, as amended at 56 tor to be executed and returned to the
FR 1928, Jan. 18, 1991; 62 FR 53204, Oct. 10,
United States for subsequent filing in
1997; 69 FR 56546, Sept. 21, 2004; 80 FR 17970,
Apr. 2, 2015]
the U.S. Patent and Trademark Office
(15 CFR 734.10(a)).
§§ 5.16–5.17 [Reserved] [70 FR 56129, Sept. 26, 2005]
§ 5.18 Arms, ammunition, and imple- § 5.20 Export of technical data relating
ments of war. to sensitive nuclear technology.
(a) The exportation of technical data Under regulations (10 CFR 810.7) es-
relating to arms, ammunition, and im- tablished by the United States Depart-
plements of war generally is subject to ment of Energy, an application filed in
the International Traffic in Arms Reg- accordance with the regulations (§§ 5.11
ulations of the Department of State (22 through 5.25) of the Patent and Trade-
CFR parts 120 through 130); the articles mark Office and eligible for foreign fil-
designated as arms, ammunitions, and ing under 35 U.S.C. 184, is considered to
implements of war are enumerated in be information available to the public
the U.S. Munitions List (22 CFR part in published form and a generally au-
121). However, if a patent applicant thorized activity for the purposes of
complies with regulations issued by the the Department of Energy regulations.
Commissioner for Patents under 35 [62 FR 53205, Oct. 10, 1997]
U.S.C. 184, no separate approval from
the Department of State is required § 5.25 Petition for retroactive license.
unless the applicant seeks to export (a) A petition for a retroactive li-
technical data exceeding that used to cense under 35 U.S.C. 184 shall be pre-
support a patent application in a for- sented in accordance with § 5.13 or
eign country. This exemption from De- § 5.14(a), and shall include:
partment of State regulations is appli- (1) A listing of each of the foreign
cable regardless of whether a license countries in which the unlicensed pat-
from the Commissioner for Patents is ent application material was filed,
required by the provisions of §§ 5.11 and (2) The dates on which the material
5.12 (22 CFR part 125). was filed in each country,
(b) When a patent application con- (3) A verified statement (oath or dec-
taining subject matter on the Muni- laration) containing:
tions List (22 CFR part 121) is subject (i) An averment that the subject
to a secrecy order under § 5.2 and a pe- matter in question was not under a se-
tition is made under § 5.5 for a modi- crecy order at the time it was filed
fication of the secrecy order to permit aboard, and that it is not currently
filing abroad, a separate request to the under a secrecy order,
Department of State for authority to (ii) A showing that the license has
export classified information is not re- been diligently sought after discovery
of the proscribed foreign filing, and
quired (22 CFR part 125).

(iii) An explanation of why the mate-
[62 FR 53205, Oct. 10, 1997] rial was filed abroad through error
232
U.S. Patent and Trademark Office, Commerce §§ 5.31–5.33
without the required license under application and no petition under

§ 5.11 first having been obtained, and § 1.181 has been filed, a final rejection of
(4) The required fee (§ 1.17(g) of this the application under 35 U.S.C. 185 will
chapter). be made.
(b) The explanation in paragraph (a) [49 FR 13463, Apr. 4, 1984, as amended at 56
of this section must include a showing FR 1929, Jan. 18, 1991; 62 FR 53206, Oct. 10,
of facts rather than a mere allegation 1997; 69 FR 56546, Sept. 21, 2004; 77 FR 48826,
of action through error. The showing of Aug. 14, 2012]
facts as to the nature of the error
should include statements by those GENERAL
persons having personal knowledge of §§ 5.31–5.33 [Reserved]
the acts regarding filing in a foreign
country and should be accompanied by
copies of any necessary supporting doc- PART 6—CLASSIFICATION OF
uments such as letters of transmittal GOODS AND SERVICES UNDER
or instructions for filing. The acts THE TRADEMARK ACT
which are alleged to constitute error
should cover the period leading up to EDITORIAL NOTE: Part 6 is placed in the
and including each of the proscribed separate grouping of parts pertaining to
foreign filings. trademarks regulations.
(c) If a petition for a retroactive li-
cense is denied, a time period of not PART 7—RULES OF PRACTICE IN
less than thirty days shall be set, dur- FILINGS PURSUANT TO THE PRO-
ing which the petition may be renewed. TOCOL RELATING TO THE MA-
Failure to renew the petition within
the set time period will result in a final DRID AGREEMENT CONCERNING
denial of the petition. A final denial of THE INTERNATIONAL REGISTRA-
a petition stands unless a petition is TION OF MARKS
filed under § 1.181 within two months of
the date of the denial. If the petition EDITORIAL NOTE: Part 7 is placed in the
for a retroactive license is denied with separate grouping of parts pertaining to
respect to the invention of a pending trademarks regulations.
233
INDEX I—RULES RELATING TO PATENTS
EDITORIAL NOTE: This listing is provided for informational purposes only. It is compiled and
kept current by the Department of Commerce. This index is updated as of July 1, 2016.
Section
A
Abandoned applications:
Abandonment by failure to prosecute............................................................. 1.135
Abandonment during interference ............................................................ 41.127(b)
Abandonment for failure to pay issue fee ....................................................... 1.316
Express abandonment ..................................................................................... 1.138
To avoid publication ................................................................................1.138(c)
Referred to in issued patents............................................................................ 1.14
Revival of........................................................................................................ 1.137
When open for public inspection ...................................................................... 1.14
Abandonment of application. (See Abandoned applications)
Abstract of the disclosure.(content, physical requirements) .......................... 1.72(b)
Separate sheet required for commencement of ............................ 1.52(b)(4), 1.72(b)
Arrangement in overall application ........................................................ 1.77, 1.163
Access to pending applications (limited) ............................................................ 1.14
Action by applicant .................................................................. 1.111-1.116, 1.121-1.138
Address, Correspondence, only one recognized by Office ................................ 1.33(c)
Address for notice to Director of appeal to Fed. Cir ........................................... 90.2
Address of Solicitor’s Office ......................................................................... 1.1(a)(3)
Address of the Patent and Trademark Office........................................................ 1.1
Mail Stop Assignment Recordation Services ..................................... 1.1(a)(4), 3.27
Mail Stop Document Services ................................................................... 1.1(a)(4)
Mail Stop Ex Parte Reexam......................................................... 1.1(c)(1), 1.1(c)(4)
Mail Stop Inter Partes Reexam ................................................................. 1.1(c)(2)
Mail Stop Interference ............................................................................... 41.10(b)
Mail Stop OED ..................................................................................... 1.1(a)(5), 4.6
Mail Stop Patent Ext .................................................................................... 1.1(e)
Mail Stop PCT ............................................................................................... 1.1(b)
Mail Stop Supplemental Examination....................................................... 1.1(c)(3)
Adjustment of patent term. (See Patent term adjustment)
Administrator, executor, or other legal representative may make appli-
cation and receive patent ...................................................................... 1.42, 1.43
In an international application ...................................................................... 1.422
Oath or declaration .......................................................................................... 1.64
Admission to practice. (See Attorneys and agents)
Affidavit (see also Oath in patent application):
After appeal ................................................................................................ 41.33(d)
In support of application for reissue............................................................... 1.175
To disqualify commonly owned patent as prior art.................................... 1.131(c)
To overcome cited patent or publication........................................................ 1.131
Traversing grounds of rejection...................................................................... 1.132
Agents. (See Attorneys and agents)
Allowance and issue of patent:
Amendment after allowance (before or with issue fee) ................................... 1.312
Deferral of issuance ........................................................................................ 1.314
Delivery of patent........................................................................................... 1.315
235
Failure to pay issue fee ..................................................................... 1.137(c), 1.316

Issuance of patent........................................................................................... 1.314
Notice of allowance......................................................................................... 1.311
Patent to issue upon payment of issue fee...................................................... 1.314
Reasons for ................................................................................................. 1.104(e)
Withdrawal from issue .................................................................................... 1.313
Amendment:
Adding or substituting claims ............................................................... 1.111, 1.121
After appeal .................................................................................. 1.116, 41.33, 41.63
After decision on appeal, based on new rejection of Patent Trial and
Appeal Board ........................................................................................ 41.50(b)
After final action ................................................................................... 1.116, 41.33
After final action (transitional procedures) ................................................... 1.129
After notice of allowance................................................................................ 1.312
By patent owner ............................................................................................. 1.530
Copying claim of another application for interference ................................. 41.202
Copying claim of issued patent ..................................................................... 41.202
Deletions and insertions ................................................................................. 1.121
Drawings...................................................................................... 1.84, 1.85, 1.121(d)
Manner of making........................................................................................... 1.121
May be required .............................................................................................. 1.121
New matter prohibited................................................................... 1.121(f), 1.173(a)
Numbering of claims....................................................................................... 1.126
Of amendments ............................................................................................... 1.121
Of claims................................................................................................ 1.111, 1.121
Of disclosure ................................................................................................... 1.121
Of drawing .................................................................................................. 1.121(d)
Of specification ............................................................................................... 1.121
Paper and writing............................................................................................. 1.52
Petition from refusal to admit ....................................................................... 1.127
Preliminary .................................................................................................... 1.115
Proposed during interference.............................................................. 41.121, 41.208
Provisional application .................................................................. 1.53(c), 1.121(k)
Reexamination proceedings ...................................................... 1.121(j), 1.530, 1.941
Reissue ........................................................................................... 1.121(i), 1.173(b)
Requisites of ............................................................ 1.33(b), 1.111, 1.116, 1.121, 1.125
Right to amend ........................................................... 1.111, 1.114, 1.116, 1.121, 1.127
Signature to ................................................................................................. 1.33(b)
Substitute specification ................................................................................. 1.125
Time for .......................................................................................................... 1.134
To applications in interference........................................................... 41.121, 41.208
To correct inaccuracies .............................................................................. 1.121(e)
To correspond to original drawing or specification .................................... 1.121(e)
To reissues ......................................................................................... 1.121(i), 1.173
To save from abandonment............................................................................. 1.135
America Invents Act Post-Grant Proceedings (See Inter parte review, post-grant
review, covered business method review, and derivation proceeding)
Amino Acid Sequences. (See Nucleotide and/or Amino Acid Sequences)
Appeal to Patent Trial and Appeal Board:
Action following decision ............................................................................... 41.54
Affidavits after appeal................................................................................ 41.33(d)
Brief ................................................................................................................ 41.37
Decision by Board....................................................................................... 41.50(b)
Examiner’s answer.......................................................................................... 41.39
Fees........................................................................................................ 41.20, 41.45
Hearing of ....................................................................................................... 41.47
New grounds for rejecting a claim.............................................................. 41.50(b)
Notice of appeal .............................................................................................. 41.31
236
Index I
Reexamination, inter partes proceeding .......................................................... 1.959

Rehearing ....................................................................................................... 41.52
Reopening after decision ................................................................................ 1.198
Reply brief ...................................................................................................... 41.41
Statement of grounds for rejecting, by Patent Trial and Appeal
Board ........................................................................................................ 41.50
Appeal to Court of Appeals for the Federal Circuit:
Fee provided by rules of court.......................................................................... 90.2
From Patent Trial and Appeal Board ........................................................ 90.1-90.3
Notice and reasons of appeal ............................................................................ 90.2
Reexamination, inter partes proceeding .......................................................... 1.983
Time for ........................................................................................................... 90.3
Applicant for patent................................................................................... 1.42, 1.421
Change..................................................................................................... 1.46, 1.472
Deceased or legally incapacitated inventor................................. 1.43, 1.64(b), 1.422
Executor or administrator ............................................................................... 1.43
Informed of application number .................................................................. 1.54(b)
Joint changed to sole .............................................................................. 1.48, 1.472
Letters for, sent to attorney or agent.......................................................... 1.33(a)
May be represented by patent practitioner ...................................................... 1.31
Must be represented by patent practitioner if juristic entity.......................... 1.31
Personal attendance unnecessary ...................................................................... 1.2
Required to conduct business with decorum and courtesy ................................ 1.3
Required to report assistance received.......................................................... 1.4(g)
Sole changed to another sole .............................................................. 1.48, 1.497(d)
Sole changed to joint .......................................................................... 1.48, 1.497(d)
Application data sheet ........................................................................................ 1.76
Application for patent (see also Abandoned applications, Claims, Drawing, Exam-
ination of application Reissues, Provisional applications, Specification):
Access to .......................................................................................................... 1.14
Acknowledgement of filing .......................................................................... 1.54(b)
Alteration after execution ........................................................................... 1.52(c)
Alteration before execution ......................................................................... 1.52(c)
Applicant.......................................................................................................... 1.42
Application number and filing date ................................................................. 1.54
Arrangement .................................................................................. 1.77, 1.154, 1.163
Continuation or division, reexecution not required..................................... 1.63(d)
Continued Prosecution Application (CPA), Design ...................................... 1.53(d)
Copies of, furnished to applicants ................................................................ 1.59(c)
Cross-references of related applications........................................................... 1.78
Deceased or legally incapacitated inventor.............................................. 1.43, 1.64
International phase......................................................................................1.422
Declaration in lieu of oath ............................................................................... 1.68
Duty of disclosure ............................................................................................ 1.56
Elements of, order and arrangement of.......................................... 1.77, 1.154, 1.163
Filed apparently without all figures of drawing:
Petition asserting all figures of drawing were filed ..................................1.53(e)
Petition and filing of missing figures seeking new filing date.....................1.182
Filed apparently without all pages of specification, petition asserting
all pages were filed................................................................................. 1.53(e)
Filed apparently without any drawing, petition asserting drawing was
filed, or was not necessary, or adding drawing and seeking new fil-
ing date .................................................................................................. 1.53(e)
Filed by other than inventor............................................................. 1.42, 1.43, 1.46
Filed by reference ........................................................................................ 1.57(a)
International phase.........................................................................1.421(c), 1.422
Filing and national fees ................................................................. 1.16, 1.445, 1.492
Filing date........................................................................................................ 1.53
237
International application ........................................................................1.431(b)

Foreign language oath or declaration .............................................................. 1.69
Formulas and tables......................................................................................... 1.58
General requisites ............................................................................................ 1.51
Identification required in letters concerning .................................................... 1.5
Incomplete application not forwarded for examination ................................... 1.53
Language, paper, writing, margin .................................................................... 1.52
Later completion of nonprovisional application .......................................... 1.53(f)
Must be made by actual inventor, with exceptions ........................... 1.42, 1.46, 1.64
Names of all inventors required................................................................ 1.41, 1.53
Non-English language.......................................................................... 1.52(b)(1)(ii)
Nonprovisional, filing of petition to convert to a provisional applica-
tion..................................................................................................... 1.53(c)(2)
Nonprovisional application forwarded for examination only when com-
plete ........................................................................................................... 1.53
Owned by Government ................................................................................ 1.103(f)
Papers forming part of original disclosure not to be expunged................ 1.59(a)(2)
Parts filed separately ....................................................................................... 1.54
Parts of application desirably filed together ................................................... 1.54
Parts of complete application .......................................................................... 1.51
Processing fees ................................................................................................. 1.17
Provisional application......................................... 1.9(a)(2), 1.51(c), 1.53(c), 1.121(k)
Publication. (See Publication of applications)
Relating to atomic energy ........................................................................... 1.14(d)
Reservation for future application not permitted............................................ 1.79
Secrecy order................................................................................................ 5.1-5.5
Tables and formulas ......................................................................................... 1.58
To be made to Director of the U.S. Patent and Trademark Office ................... 1.51
To claim one independent and distinct invention .......................................... 1.141
Two or more by same party with patentably indistinct claims ............. 1.78(f), (g)
Application number .................................................................. 1.5(a), 1.53(a), 1.54(b)
Application size fee .............................................................................. 1.16(s), 1.52(f)
Arbitration award filing .................................................................................... 1.335
Arbitration in interference .............................................................................. 41.126
Assertion of micro entity status ......................................................................... 1.29
Assertion of small entity status ..................................................................... 1.27(c)
Assignee:
Correspondence held with assignee of entire interest............................... 3.71, 3.73
Establishing ownership ................................................................................ 3.73(b)
If of entire interest, patent may issue to.................................................. 1.46, 3.81
If of undivided part interest, correspondence will be held with inven-
tor .............................................................................................................. 1.33
If of undivided part interest, must assent to application for reissue of
patent ....................................................................................................... 1.172
If of undivided part interest, patent may issue jointly ............................ 1.46, 3.81
May conduct prosecution of application................................................... 3.71, 3.73
May take action in interference....................................................................... 41.9
Assignments and recording:
Abstracts of title, fee for ............................................................................. 1.19(b)
Conditional assignments .................................................................................. 3.56
Correction of Cover Sheet errors...................................................................... 3.34
Cover Sheet required ................................................................................ 3.28, 3.31
Date of receipt is date of record ....................................................................... 3.51
Effect of recording............................................................................................ 3.54
Fees ...................................................................................................... 1.21(h), 3.41
If recorded before payment of issue fee, patent may issue to as-
signee ......................................................................................................... 3.81
Impact on entitlement to micro entity status ................................................. 1.29
238
Index I
Impact on entitlement to small entity status ................................................. 1.27

May serve as inventor’s oath or declaration ................................................ 1.63(e)
Must be recorded in Patent and Trademark Office to issue patent to
assignee ...................................................................................................... 3.81
Must identify patent or application ................................................................. 3.21
Orders for copies of........................................................................................... 1.12
Patent may issue to assignee ........................................................................... 3.81
Recording of assignments................................................................................. 3.11
Records open to public inspection.................................................................... 1.12
Requirements for recording....................................................................... 3.21-3.41
What will be accepted for recording ................................................................. 3.11
Atomic energy applications reported to Department of Energy ......................... 1.14
Attorneys and agents:
Acting in a representative capacity ......................................................... 1.33, 1.34
Assignment will not operate as a revocation of power..................................... 1.36
Certificate of good standing ..................................................................... 1.21(a)(4)
Fee on admission.......................................................................................... 1.21(a)
Office cannot aid in selection of....................................................................... 1.31
Personal interviews with examiners............................................................... 1.133
Power of attorney ............................................................................................ 1.32
Representation in international application .................................................. 1.455
Representative capacity ........................................................................... 1.33, 1.34
Required to conduct business with decorum and courtesy ................................ 1.3
Revocation of power..................................................................................... 1.36(a)
Withdrawal of ....................................................................................... 1.36(b), 41.5
Authorization of agents. (See Attorneys and agents)
Award in arbitration.......................................................................................... 1.335
B
Balance in deposit account ................................................................................. 1.25
Basic filing fee..................................................................................................... 1.16
Basic national fee .............................................................................................. 1.492
Benefit of earlier application .............................................................................. 1.78
Bill in equity. (See Civil action)
Biological material. (See Deposit of Biological material)
Board of Patent Appeals and Interferences (renamed as Patent Trial and Appeal
Board). (See Appeal to Patent Trial and Appeal Board, Patent Trial and Ap-
peal Board, Inter Partes Review, Post-Grant Review, Derivation Proceeding,
Patent Trial Practice and Procedure, and Interferences)
Briefs:
In petitions to Director .................................................................................. 1.181
On appeal to Patent Trial and Appeal Board .................................................. 41.37
Business to be conducted with decorum and courtesy .......................................... 1.3
Business to be transacted in writing .................................................................... 1.2
C
Certificate of correction ........................................................................... 1.322, 1.323
Fee ............................................................................................................... 1.20(a)
Mistakes not corrected ................................................................................... 1.325
Certificate of mailing (as first class mail) or transmission.................................. 1.8
Certificate, reexamination ................................................................................ 1.570
Certified copies of records, papers, etc ...................................................... 1.4(f), 1.13
Fee for certification..................................................................................... 1.19(b)
Chemical and mathematical formulas and tables ............................................... 1.58
Citation of prior art in patent ........................................................................... 1.501
Citation of references by examiner ............................................................... 1.104(d)
239
Civil action ................................................................................................... 90.1-90.3

Claims (see also Examination of applications):
Amendment of ................................................................................................ 1.121
Date of invention of ........................................................................................ 1.110
Dependent ........................................................................................................ 1.75
Design patent.................................................................................................. 1.153
International ..............................................................................................1.1025
May be in dependent form ................................................................................ 1.75
More than one permitted.................................................................................. 1.75
Multiple dependent .......................................................................................... 1.75
Must conform to invention and specification .................................................. 1.75
Notice of rejection of ...................................................................................... 1.104
Numbering of .................................................................................................. 1.126
Part of complete application............................................................................ 1.51
Patentably indistinct, same applicant or owner .................................... 1.78(f), (g)
Plant patent ................................................................................................... 1.164
Rejection of ................................................................................................ 1.104(c)
Required ........................................................................................................... 1.75
Separate Sheet required for commencement of claim(s) ................. 1.52(b), 1.75(h)
Twice or finally rejected before appeal ...................................................... 41.31(a)
Color drawing .............................................................................................. 1.84(a)(2)
Color photographs ....................................................................................... 1.84(b)(2)
Common Ownership, statement by assignee may be required............................. 1.78
Compact disc submissions:
Computer program listings .............................................................................. 1.96
Requirements ............................................................................................... 1.52(e)
Sequence listings ........................................................................................ 1.821(c)
Tables ............................................................................................................... 1.58
Complaints against examiners, how presented ..................................................... 1.3
Composition of matter, specimens of ingredients may be required .................... 1.93
Computer program listings ................................................................................. 1.96
Concurrent office proceedings ........................................................................... 1.565
Conduct of ex parte reexamination proceedings ................................................. 1.550
Continued examination, request for .................................................................. 1.114
Continued Prosecution Application (CPA), Design ......................................... 1.53(d)
Continuing application for invention disclosed and claimed in prior ap-
plication.................................................................................................... 1.53(b)
Copies of patents, published applications, records, etc. ....................... 1.11, 1.12, 1.13
Copies of records, fees.............................................................................. 1.19(b), 1.59
Copyright notice in drawings .......................................................................... 1.84(s)
Copyright notice in specification.................................................................... 1.71(d)
Corrected publication of application ................................................................. 1.221
Correction, certificate of .......................................................................... 1.322, 1.323
Correction of inventorship ......................................................................... 1.48, 1.324
Correspondence:
Address, only one recognized ....................................................................... 1.33(c)
Addresses for non-trademark correspondence ................................................... 1.1
Business with the Office to be transacted by..................................................... 1.2
Discourteous communications not entered ....................................................... 1.3
Double, with different parties in interest not allowed ..................................... 1.33
Facsimile transmissions................................................................................ 1.6(d)
Held with attorney or agent............................................................................. 1.33
Identification of application or patent in letter relating to.............................. 1.5
Involving national security ............................................................................... 5.1
May be held exclusively with assignee of entire interest................................. 3.71
Nature of............................................................................................................ 1.4
Patent owners in reexamination .................................................................. 1.33(c)
Receipt of letters and papers ............................................................................. 1.6
240
Index I
Rules for conducting in general.................................................................... 1.1-1.8

Separate letter for each subject or inquiry ................................................... 1.4(c)
Signature requirements................................................................................. 1.4(d)
When no attorney or agent............................................................................... 1.33
With attorney or agent after power or authorization is filed .......................... 1.33
Court of Appeals for the Federal Circuit, appeal to. (See Appeal to Court of Ap-
peals for the Federal Circuit)
CPA (Continued Prosecution Application), Design ......................................... 1.53(d)
Credit card payment............................................................................................ 1.23
Customer Number:
Defined ..................................................................................................... 1.32(a)(5)
Required to establish a Fee Address ........................................................... 1.363(c)
Covered Business Method Patent Review. (See also Patent Trial Practice and Pro-
cedure; Post-Grant Review):
General ................................................................................................ 42.300-42.304
Procedure; pendency...................................................................................42.300
Definitions ..................................................................................................42.301
Who may petition .......................................................................................42.302
Time for filing ............................................................................................42.303
Content of petition .....................................................................................42.304
D
Date of invention of subject matter of individual claims .................................. 1.110
Day for taking any action or paying any fee falling on Saturday, Sun-
day, or Federal holiday ........................................................................ 1.7, 1.9(h)
Daytime telephone number............................................................................. 1.33(a)
Death or legal incapacitation of inventor ........................................................... 1.43
In an international application ...................................................................... 1.422
Decision on appeal by the Patent Trial and Appeal Board ................................ 41.50
Action following decision ............................................................................... 41.54
Declaration (See also Oath in patent application).
Foreign language.............................................................................................. 1.69
In lieu of oath................................................................................................... 1.68
In patent application........................................................................................ 1.68
Requirements to enter the U.S. national phase.............................................. 1.497
Deferral of examination..................................................................................... 1.103
Definitions:
Applicant.......................................................................................................... 1.42
Assignment ........................................................................................................ 3.1
Customer Number .................................................................................... 1.32(a)(5)
Document .......................................................................................................... 3.1
Effective filing date of a claimed invention ................................................... 1.109
Federal holiday within the District of Columbia .......................................... 1.9(h)
Inventorship........................................................................................... 1.9(d), 1.41
Joint Research Agreement ............................................................................ 1.9(e)
Micro entity ..................................................................................................... 1.29
National and international applications ........................................................... 1.9
National security classified ........................................................................... 1.9(i)
Nonprofit organization(for small entity purposes) .................................. 1.27(a)(3)
Nonprovisional application........................................................................ 1.9(a)(3)
Paper ............................................................................................................. 1.9(k)
Person (for small entity purposes) ........................................................... 1.27(a)(1)
Power of attorney .................................................................................... 1.32(a)(2)
Principal .................................................................................................. 1.32(a)(3)
Provisional application ............................................................................. 1.9(a)(2)
Published application .................................................................................... 1.9(c)
Recorded document............................................................................................ 3.1
241
Revocation ............................................................................................... 1.32(a)(4)

Service of process ........................................................................ 15 C.F.R. Part 15
Small business concern (for small entity purposes) ................................. 1.27(a)(2)
Small entity................................................................................................. 1.27(a)
Terms under Patent Cooperation Treaty........................................................ 1.401
Delivery of patent.............................................................................................. 1.315
Deposit accounts ................................................................................................. 1.25
Fees .............................................................................................................. 1.21(b)
Deposit of computer program listings................................................................. 1.96
Deposit of biological material:
Acceptable depository .................................................................................... 1.803
Biological material......................................................................................... 1.801
Examination procedures ................................................................................. 1.809
Furnishing of samples..................................................................................... 1.808
Need or Opportunity to make a deposit.......................................................... 1.802
Replacement or supplemental deposit ............................................................ 1.805
Term of deposit............................................................................................... 1.806
Time of making original deposit .................................................................... 1.804
Viability of deposit ......................................................................................... 1.807
Depositions (See also Testimony in interferences):
Certificate of officer to accompany........................................................... 41.157(e)
Formalities to be observed in preparing ....................................................... 41.157
Person before whom taken ............................................................................ 41.157
Description of invention. (See Specification)
Design Patent Applications:
Arrangement of specification ......................................................................... 1.154
Claim .......................................................................................................... 1.153(a)
Description ................................................................................................. 1.153(a)
Drawing .......................................................................................................... 1.152
Expedited Examination .................................................................................. 1.155
Filing fee...................................................................................................... 1.16(b)
International. (See Hague Agreement)
Issue fee ....................................................................................................... 1.18(b)
Oath ............................................................................................................ 1.153(b)
Rules applicable.............................................................................................. 1.151
Title............................................................................................................ 1.153(a)
Determination of request for ex parte reexamination ........................................ 1.515
Derivation Proceeding (See also Patent Trial Practice and Procedure)
General ................................................................................................ 42.400-42.407
Definitions ..................................................................................................42.401
Who may petition .......................................................................................42.402
Time for filing ............................................................................................42.403
Derivation Fee ...................................................................................42.15, 42.404
Service of petition ......................................................................................42.406
Filing date ..................................................................................................42.407
Institution of derivation proceeding ................................................................ 42.408
After Institution.................................................................................. 42.409-42.412
Settlement agreement ................................................................................42.409
Arbitration .................................................................................................42.410
Common interests in the invention ............................................................42.411
Public availability of Board records...........................................................42.412
Director of the USPTO (See also Petition to the Director):
Address of .......................................................................................................... 1.1
Availability of decisions by.............................................................................. 1.14
Cases decided by Board reopened only by ....................................................... 1.198
242
Index I
Initiates ex parte reexamination ..................................................................... 1.520

Disclaimer, statutory:
During interference................................................................................... 41.127(b)
Fee ............................................................................................................... 1.20(d)
Requirements of.............................................................................................. 1.321
Terminal ......................................................................................................... 1.321
Discovery in interferences ............................................................................... 41.150
Division. (See Restriction of application)
Division of patent on reissue ............................................................................. 1.177
Document supply fees.......................................................................................... 1.19
Drawing:
Amendment of ............................................................................................ 1.121(d)
Annotated drawings.................................................................................... 1.121(d)
Arrangement of views ................................................................................... 1.84(i)
Arrows .......................................................................................................... 1.84(r)
Character of lines ......................................................................................... 1.84(l)
Color......................................................................................................... 1.84(a)(2)
Content of drawing........................................................................................... 1.83
Conventional features .................................................................................. 1.83(a)
Copyright notice........................................................................................... 1.84(s)
Correction........................................................................... 1.84(w), 1.85(c), 1.121(d)
Cost of copies of ............................................................................................... 1.19
Description, brief and detailed ......................................................................... 1.74
Design application .......................................................................................... 1.152
Figure for front page..................................................................... 1.76(b)(3), 1.84(j)
Filed with application ...................................................................................... 1.81
Graphics ....................................................................................................... 1.84(d)
Hatching and shading ................................................................................. 1.84(m)
Holes ............................................................................................................ 1.84(x)
Identification ............................................................................................... 1.84(c)
If of an improvement, must show connection with old structure ................ 1.83(b)
Incorporation by reference to prior application............................................... 1.57
In international applications.......................................................................... 1.437
Ink............................................................................................................ 1.84(a)(1)
Lead lines..................................................................................................... 1.84(q)
Legends ........................................................................................................ 1.84(o)
Letters ......................................................................................................... 1.84(p)
Location of names ........................................................................................ 1.84(c)
Margin.......................................................................................................... 1.84(g)
Mask work notice ......................................................................................... 1.84(s)
Must show every feature of the invention.................................................... 1.83(a)
No return or release ..................................................................................... 1.85(b)
Numbering of sheets ..................................................................................... 1.84(t)
Numbering of views...................................................................................... 1.84(u)
Numbers ....................................................................................................... 1.84(p)
Original should be retained by applicant ..................................................... 1.81(a)
Paper ............................................................................................................ 1.84(e)
Part of application papers............................................................................ 1.52(b)
Photographs ................................................................................................. 1.84(b)
Plant patent application ......................................................................... 1.81, 1.165
Printed and published by the Office when patented ......................................... 1.84
Reference letters, numerals, and characters ........................................ 1.74, 1.84(p)
Reissue.................................................................................................... 1.173(a)(2)
Release not permitted .................................................................................. 1.85(b)
Replacement drawings................................................................................ 1.121(d)
Required by law when necessary for understanding......................................... 1.81
Scale ............................................................................................................ 1.84(k)
Security markings ....................................................................................... 1.84(v)
243
Shading ....................................................................................................... 1.84(m)

Size of sheet.................................................................................................. 1.84(f)
Standards for drawings .................................................................................... 1.84
Symbols ....................................................................................................... 1.84(n)
Views ........................................................................................................... 1.84(h)
When necessary, part of complete application ................................................. 1.51
Duplicate copies ............................................................................................... 1.4(b)
Duty of disclosure ............................................................................. 1.56, 1.555, 1.933
Patent term extension .................................................................................... 1.765
E
Early publication of application........................................................................ 1.219
Eighteen-month publication of applications. (See Publication of applications)
Election of species ............................................................................................. 1.146
Electronic documents ..................................................................................... 1.52(e)
Application size fee ........................................................................... 1.16(s), 1.52(f)
Non-electronic filing fee............................................................................... 1.16(t)
Electronic filing of application ..................................................... 1.6(a)(4), 1.52(a)(5)
Establishing micro entity status ........................................................................ 1.29
Establishing small entity status ................................................................. 1.27, 1.28
Evidence. (See Testimony in interferences)
Ex parte reexamination. (See Reexamination)
Examination of applications:
Advancement of examination ......................................................................... 1.102
As to form............................................................................................... 1.104(a)(1)
Citation of references ................................................................................. 1.104(d)
Completeness of examiner’s action ............................................................ 1.104(b)
Deferral of....................................................................................................... 1.103
Examiner’s action ...................................................................................... 1.104(a)
International-type search....................................................................... 1.104(a)(3)
Nature of examination ............................................................................... 1.104(a)
Prioritized examination ............................................................................. 1.102(e)
Reasons for allowance ................................................................................ 1.104(e)
Reconsideration after rejection if requested .................................................. 1.111
Reissue............................................................................................................ 1.176
Rejection of claims ..................................................................................... 1.104(c)
Request for continued examination(RCE) ...................................................... 1.114
Requirement for information by examiner ..................................................... 1.105
Suspension of action by the Office.................................................................. 1.103
Examiners:
Answers on appeal .......................................................................................... 41.39
Complaints against ............................................................................................ 1.3
Interviews with ...................................................................................... 1.133, 1.560
Executors ............................................................................................ 1.42, 1.64, 1.422
Exhibits. (See Models and exhibits)
Expedited examination of design applications .................................................. 1.155
Export of technical data .............................................................................. 5.19, 5.20
Express abandonment ........................................................................................ 1.138
To avoid publication................................................................................... 1.138(c)
Priority Mail Express® ........................................................................................ 1.10
Date of receipt of ............................................................................................... 1.6
Petition in regard to ........................................................................................ 1.10
Expungement of information .............................................................................. 1.59
Extension of patent term. (See also Patent term adjustment):
Due to examination delay under the URAA (35 U.S.C. 154)............................. 1.701
Due to regulatory review period (35 U.S.C. 156):
Applicant for ................................................................................................1.730
244
Index I
Application for .............................................................................................1.740

Calculation of term:
Animal Drug Product................................................................................1.778
Food or color additive ...............................................................................1.776
Human drug product .................................................................................1.775
Medical device...........................................................................................1.777
Veterinary biological product ...................................................................1.779
Certificate ....................................................................................................1.780
Conditions for ..............................................................................................1.720
Determination of eligibility.........................................................................1.750
Duty of disclosure ........................................................................................1.765
Filing date of application ............................................................................1.741
Formal requirements ...................................................................................1.740
Incomplete application ................................................................................1.741
Interim extension................................................................................1.760, 1.790
Multiple applications ...................................................................................1.785
Patents subject to ........................................................................................1.710
Signature requirements for application.......................................................1.730
Withdrawal of application............................................................................1.770
Extension of time .............................................................................................. 1.136
Fees .............................................................................................................. 1.17(a)
Interference proceedings .................................................................................. 41.4
Reexamination proceedings ........................................................................ 1.550(c)
F
Facsimile transmissions............................................................................. 1.6(d), 1.8
Federal Holiday, time for taking action .................................................... 1.7, 1.9(h)
FEDERAL REGISTER, publication of rules in........................................................ 1.351
Fees and payment of money:
Credit card ................................................................................................... 1.23(b)
Deposit account................................................................................................ 1.25
Document supply fees....................................................................................... 1.19
Extension of time......................................................................................... 1.17(a)
Fee on appeal to the Court of Appeals for the Federal Circuit provided
by rules of court ......................................................................................... 90.2
Fees payable in advance............................................................................... 1.22(a)
Foreign filing license petition ..................................................................... 1.17(g)
For international-type search report ........................................................... 1.21(e)
Itemization required .................................................................................... 1.22(b)
Method of payment .......................................................................................... 1.23
Money by mail at risk of sender .................................................................. 1.23(a)
Money paid by mistake or in excess................................................................. 1.26
Necessary for application to be complete ........................................................ 1.51
Petition fees............................................................. 1.17(f), 1.17(g), 1.17(h), 41.20(a)
Prioritized examination ............................................................................... 1.17(c)
Processing fees.............................................................................................. 1.17(i)
Publication of application .............................................................. 1.18(d), 1.211(e)
Reexamination request ................................................................................ 1.20(c)
Refunds ..................................................................................................... 1.26, 1.28
Relating to international applications .................................................. 1.445, 1.492
Schedule of fees and charges ..................................................................... 1.16-1.21
Files open to the public ............................................................................... 1.11, 1.14
Filing date of application.................................................................................... 1.53
Filing, search and examination fees.................................................................... 1.16
Filing of interference settlement agreements.................................................. 41.205
Final rejection:
Appeal from .................................................................................................... 41.31
245
Response to .......................................................................... 1.113, 1.114, 1.116, 1.129

When and how given ....................................................................................... 1.113
First Class Mail .................................................................................................... 1.8
Foreign application ............................................................................................. 1.55
License to file ............................................................................................ 5.11-5.25
Foreign country:
Taking oath in ................................................................................................. 1.66
Taking testimony in ........................................................................... 41.156, 41.157
Foreign mask work protection .................................................................... Part 150
Evaluation of request ..................................................................................... 150.4
Definition ....................................................................................................... 150.1
Duration of proclamation ............................................................................... 150.5
Initiation of evaluation .................................................................................. 150.2
Mailing address............................................................................................... 150.6
Submission of requests ................................................................................... 150.3
Formulas and tables in patent applications........................................................ 1.58
Fraud practiced or attempted on Office ................................ 1.27(h), 1.56, 1.555, 1.765
Freedom of Information Act ........................................................................ Part 102
G
Gazette. (See Official Gazette)
General authorization to charge deposit account ............................................... 1.25
General information and correspondence................................................. 1.1-1.8, 1.10
Government acquisition of foreign patent rights ........................................ Part 501
Government employee invention ................................................................. Part 501
Government interest in patent, recording of ................................ 3.11, 3.31, 3.41, 3.58
Governmental registers....................................................................................... 3.58
H
Hague Agreement:
International design applications........................................................ 1.1001-1.1071
Access to ....................................................................................................1.14(j)
Applied for by person/entity other than inventor .....................................1.46(b)
Benefit claim in .............................................................................1.78(d), 1.78(e)
Definition of ...............................................................................................1.9(n)
Deposit account usage in ...............................................................................1.25
Drawing corrections in ............................................................................1.121(d)
Expedited examination of ............................................................................1.155
Incorporation by reference as to inadvertently omitted portion of
specification or drawing(s) ..................................................................1.57(b)
Inventorship in...........................................................................................1.41(f)
Priority claim in ......................................................................................1.55(m)
Hearings:
Before the Patent Trial and Appeal Board ..................................................... 41.47
Fee for appeal hearing .................................................................................... 41.20
In disciplinary proceedings............................................................................ 11. 44
Of motions in interferences........................................................................... 41.124
Holiday, time for action expiring on .............................................................. 1.6, 1.7
I
Identification of application, patent or registration ............................................ 1.5
Incorporation by Reference ................................................................................. 1.57
Information disclosure statement:
At time of filing application ........................................................................ 1.51(d)
Content of ........................................................................................................ 1.98
Not permitted in provisional applications ................................................... 1.51(d)
246
Index I
Reexamination....................................................................................... 1.555, 1.902

To comply with duty of disclosure ................................................................... 1.97
Information, Public...................................................................................... Part 102
Inter partes reexamination. (See Reexamination)
Interferences. (See also Depositions, Notice, Statement in interferences, Testi-
mony in interferences):
Abandonment of the contest ..................................................................... 41.127(b)
Access to applications ................................................................................... 41.109
Action by examiner after interference .......................................................... 41.127
Addition of new party by judge ..................................................................... 41.203
Amendment during ............................................................................. 41.121, 41.208
Appeal to the Court of Appeals for the Federal Circuit............................. 90.1-90.3
Applicant requests ........................................................................................ 41.202
Arbitration .................................................................................................... 41.126
Burden of proof ......................................................................................... 41.121(b)
Civil action ................................................................................................ 90.1-90.3
Concession of priority ............................................................................... 41.127(b)
Correspondence ............................................................................................... 41.10
Decision on motions ...................................................................................... 41.125
Declaration of interference ........................................................................... 41.203
Definition ........................................................................................... 41.100, 41.201
Disclaimer to avoid interference .............................................................. 41.127(b)
Discovery ...................................................................................................... 41.150
Extensions of time ........................................................................................... 41.4
Identifying claim from patent....................................................................... 41.202
In what cases declared................................................................................... 41.203
Inspection of cases of opposing parties ......................................................... 41.109
Interference with a patent ............................................................................ 41.202
Judgment ...................................................................................................... 41.127
Junior party fails to overcome filing date of senior party............................ 41.204
Jurisdiction of interference .......................................................................... 41.103
Manner of service of papers ........................................................................... 41.106
Motions .................................................................................... 41.121, 41.155, 41.208
Notice and access to applications of opposing parties .................................. 41.109
Notice of basis for relief ..................................................................... 41.120, 41.204
Notice of reexamination, reissue, protest or litigation.................................... 41.8
Notice to file civil action ................................................................................. 90.2
Oral argument ............................................................................................... 41.124
Ownership of applications or patents involved ............................................. 41.206
Petitions .......................................................................................................... 41.3
Preparation for.............................................................................................. 41.202
Priority statement ........................................................................................ 41.204
Prosecution by assignee ................................................................................... 41.9
Recommendation by Patent Trial and Appeal Board .................................... 41.127
Record and exhibits ............................................................................ 41.106, 41.154
Records of, when open to public................................................................ 1.11, 41.6
Reissue filed by patentee during ................................................................... 41.203
Request by applicant..................................................................................... 41.202
Return of unauthorized papers ...................................................................... 41.128
Review of decision by civil action ............................................................. 90.1-90.3
Same party .................................................................................................... 41.206
Sanctions for failure to comply with rules or order...................................... 41.128
Sanctions for taking and maintaining a frivolous position .......................... 41.128
Secrecy order cases ....................................................................................... 5.3(b)
Service of papers ........................................................................................... 41.106
Status of claims of defeated applicant after interference ............................. 41.127
Statutory disclaimer by patentee during ................................................. 41.127(b)
Suggestion of claims for interference ........................................................... 41.202
247
Suspension of other proceedings ................................................................... 41.103

Testimony copies .......................................................................................... 41.157
Time period for completion........................................................................... 41.200
Times for discovery and taking testimony .............................. 41.150, 41.156, 41.157
Translation of document in foreign language ............................................... 41.154
International application. (See Patent Cooperation Treaty)
International Bureau ......................................................................................... 1.415
International design application. (See Hague Agreement)
International Preliminary Examining Authority, United States as ................. 1.416
International Searching Authority, United States as ....................................... 1.413
Interview summary............................................................................................ 1.133
Interviews with examiner ......................................................................... 1.133, 1.560
Inter Partes Review. (See also Patent Trial Practice and Procedure):
General ................................................................................................ 42.100-42.107
Who may petition .......................................................................................42.101
Time for filing ............................................................................................42.102
Fee .....................................................................................................42.15, 42.103
Filing date ..................................................................................................42.106
Preliminary response..................................................................................42.107
Instituting a review ......................................................................................... 42.108
Patent owner response................................................................................42.120
Motion to amend ........................................................................................42.121
Multiple proceedings; joinder .....................................................................42.122
Supplemental information .........................................................................42.123
Invention promoters:
Complaints regarding ................................................................................... 4.1-4.6
Publication of .....................................................................................4.1, 4.3, 4.5
Reply to...........................................................................................................4.4
Submission of ..................................................................................................4.3
Withdrawal of..................................................................................................4.4
Definition .......................................................................................................... 4.2
Inventor (see also Oath in patent application):
Death or legal incapacity of ............................................................................. 1.43
In international application .......................................................................1.422,
May apply for patent........................................................................................ 1.42
Unavailable or refuses to sign application ....................................................... 1.64
Inventor’s certificate priority benefit................................................................. 1.55
Inventorship and date of invention of the subject matter of individual
claims .......................................................................................................... 1.110
Issue fee............................................................................................................... 1.18
Issue of patent. (See Allowance and issue of patent)
J
Joinder of inventions in one application ................................................... 1.141-1.146
Joint inventors .............................................................. 1.45, 1.47, 1.48, 1.324, 1.421(b)
Joint patent to inventor and assignee ......................................................... 1.46, 3.81
Jurisdiction:
After decision by Patent Trial and Appeal Board.................................. 1.197, 1.198
After notice of allowance....................................................................... 1.312, 1.313
Of involved files in contested case ................................................................ 41.103
L
Law School Clinic Certification Program .............................................. 11.16-11.17
248
Index I
Legal representative of deceased or incapacitated inventor ................ 1.42, 1.43, 1.64

In international application ........................................................................... 1.422
Legal Processes ............................................................................................ Part 104
Legibility of papers which are to become part of the permanent Office
records ...................................................................................................... 1.52(a)
Letters to the Office. (See Correspondence)
Library service fee .......................................................................................... 1.19(c)
License and assignment of government interest in patent .................. 3.11, 3.31, 3.41
License for foreign filing .............................................................................. 5.11-5.15
List of U.S. Patents classified in a subclass, cost of ....................................... 1.19(d)
Local delivery box rental ................................................................................ 1.21(d)
Lost files ............................................................................................................ 1.251
M
Mail Stops
Mail Stop Assignment Recordation Services ..................................... 1.1(a)(4), 3.27
Mail Stop Document Services ................................................................... 1.1(a)(4)
Mail Stop Ex parte Reexam ......................................................... 1.1(c)(1), 1.1(c)(4)
Mail Stop Inter partes Reexam.................................................................. 1.1(c)(2)
Mail Stop Interference ............................................................................... 41.10(b)
Mail Stop OED ..................................................................................... 1.1(a)(5), 4.6
Mail Stop Patent Ext .................................................................................... 1.1(e)
Mail Stop PCT............................................................ 1.1(b), 1.417, 1.434(a), 1.480(b)
Mail Stop Supplemental Examination....................................................... 1.1(c)(3)
Maintenance fees ....................................................................................... 1.20(e)-(h)
Acceptance of delayed payment of.................................................................. 1.378
Address for payments and correspondence .................................................... 1.1(d)
Fee address for................................................................................................ 1.363
Review of decision refusing to accept ............................................................. 1.377
Submission of ................................................................................................. 1.366
Time for payment of ....................................................................................... 1.362
Mask work notice in specification .................................................................. 1.71(d)
Mask work notice on drawing ......................................................................... 1.84(s)
Mask work protection, foreign..................................................................... Part 150
Microorganisms. (See Deposit of Biological Material)
Minimum balance in deposit accounts ................................................................ 1.25
Misjoinder of inventor .................................................................. 1.48, 1.324, 1.497(d)
Missing pages when application filed
Petition alleging there were no missing pages............................................. 1.53(e)
Petition with new oath or declaration and later submission of missing
pages seeking new filing date ................................................................... 1.182
Mistake in patent, certificate thereof issued ........................................... 1.322, 1.323
Models and exhibits:
Copies of ........................................................................................................... 1.95
Disposal unless return arrangements made ..................................................... 1.94
In contested cases ......................................................................................... 41.154
May be required if deemed necessary in examination of applica-
tion ........................................................................................................ 1.91(b)
Model not generally admitted as part of application or patent ....................... 1.91
Not to be taken from the Office except in custody of sworn em-
ployee ......................................................................................................... 1.95
Return of .......................................................................................................... 1.94
Working model may be required .................................................................. 1.91(b)
Money. (See Fees and payment of money)
Motions in interference ............................................................... 41.121, 41.155, 41.208
To take testimony in foreign country ................................................ 41.156, 41.157
249
N
Name of applicant ............................................................................................... 1.41
New matter inadmissible in application............................................. 1.53(b), 1.121(f)
New matter inadmissible in reexamination ..................................... 1.530(d), 1.552(b)
New matter inadmissible in reissue................................................................... 1.173
Non-English language specification fee ........................................................... 1.17(i)
Nonprofit organization:
Definition (for small entity purposes)...................................................... 1.27(a)(3)
Nonpublication request...................................................................................... 1.213
Notice:
Of allowance of application ............................................................................ 1.311
Of appeal to the Court of Appeals for the Federal Circuit......................... 90.1-90.3
Of arbitration award ....................................................................................... 1.335
Of defective reexamination request ............................................................ 1.510(c)
Of interference .................................................................................... 41.101, 41.203
Of oral hearings on appeals before Patent Trial and Appeal Board ................ 41.47
Of rejection of an application ..................................................................... 1.104(a)
Nucleotide and/or Amino Acid Sequences:
Amendments to............................................................................................... 1.825
Disclosure in patent application..................................................................... 1.821
Form and format for computer readable form ................................................ 1.824
Format for sequence data ............................................................................... 1.822
Replacement of ............................................................................................... 1.825
Requirements.................................................................................................. 1.823
Submission on compact disc .......................................................... 1.52, 1.821, 1.823
O
Oath or declaration (inventor?s) in patent application:
Assignment may serve as ............................................................................. 1.63(e)
Apostilles ......................................................................................................... 1.66
Before whom taken in foreign countries .......................................................... 1.66
Before whom taken in the United States ......................................................... 1.66
By administrator or executor .............................................. 1.42, 1.63, 1.64, 1.497(b)
Certificate of Officer administering ................................................................. 1.66
Continuation-in-part .................................................................................... 1.63(e)
Declaration in lieu of oath ............................................................................... 1.68
Foreign language.............................................................................................. 1.69
Identification of specification to which it is directed ...................................... 1.63
International application, National Stage ..................................................... 1.497
Inventor’s Certificate ....................................................................................... 1.63
Made by inventor .............................................................................. 1.41, 1.63, 1.64
Officers authorized to administer oaths........................................................... 1.66
Person making.......................................................................................... 1.63, 1.64
Plant patent application................................................................................. 1.162
Requirements of ............................................................................................... 1.63
Ribboned to other papers ................................................................................. 1.66
Sealed ............................................................................................................... 1.66
Signature to ................................................................................ 1.4, 1.63, 1.64, 1.67
Substitute Statement ...................................................................................... 1.64
Supplemental ................................................................................................... 1.67
To acknowledge duty of disclosure .................................................................. 1.63
When taken abroad to seal all papers............................................................... 1.66
Oath or declaration in reissue application ............................................... 1.172, 1.175
Object of the invention........................................................................................ 1.73
Office action time for reply ............................................................................... 1.134
Office fees. (See Fees and payment of money)
250
Index I
Official action, based exclusively upon the written record .................................. 1.2
Official business, should be transacted in writing ................................................ 1.2
Official Gazette:
Amendments to rules published in ................................................................. 1.351
Announces request for reexamination........................................ 1.11(c), 1.525, 1.904
Notice of filing application to nonsigning inventor ......................................... 1.47
Notice of issuance of ex parte reexamination certificate............................. 1.570(f)
Notice of issuance of inter partes reexamination certificate ........................... 1.997
Service of notices in ...................................................................................... 41.101
Oral statements .................................................................................................... 1.2
Order to reexamine ............................................................................................ 1.525
Ownership, statement establishing by assignee .............................................. 3.73(b)
P
Paper, definition of .......................................................................................... 1.9(k)
Papers (requirements to become part of Office permanent records) ................... 1.52
Handwritten, not permitted ......................................................................... 1.52(a)
Papers not received on Saturday, Sunday or holidays ......................................... 1.6
Patent application. (See Application for patent and Provisional patent applica-
tions)
Patent application publication. (See Published application)
Patent attorneys and agents. (See Attorneys and agents)
Patent Cooperation Treaty:
Amendments and corrections during international processing ...................... 1.471
Amendments during international preliminary examination ........................ 1.485
Applicant for international application ......................................................... 1.421
Changes in person, name and address, where filed ............................. 1.421(f), 1.472
Claim content and format in an international application ............................ 1.436
Commencement of the national stage ........................................................ 1.491(a)
Conduct of international preliminary examination ....................................... 1.484
Definition of terms ......................................................................................... 1.401
Delays in meeting time limits ........................................................................ 1.468
Demand for international preliminary examination ...................................... 1.480
Designation of States ..................................................................................... 1.432
Election of States ....................................................................................... 1.480(d)
Entry into national stage .................................................................. 1.491(b), 1.495
Examination at national stage ....................................................................... 1.496
Fees:
Due within one month of filing international application.......................1.431(c)
Failure to pay results in withdrawal of application .......................1.431(d), 1.432
Filing and processing fees ............................................................................1.445
International preliminary examination..............................................1.481, 1.482
National stage ..............................................................................................1.492
Refunds ....................................................................................1.26, 1.446, 1.480(c)
Filing by other than inventor............................................................ 1.421(c), 1.422
International application requirements ......................................................... 1.431
Abstract .......................................................................................................1.438
Claims ..........................................................................................................1.436
Description...................................................................................................1.435
Drawings ......................................................................................................1.437
Physical requirements .................................................................................1.433
Request ........................................................................................................1.434
International Bureau ...................................................................................... 1.415
Inventor deceased .................................................................................. 1.422, 1.497
Inventor insane or legally incapacitated ........................................................ 1.497
Inventors, joint.................................................................................. 1.421(b), 1.497
Inventorship, correction in national phase ................................................ 1.497(d)
251
National stage examination ........................................................................... 1.496

Oath or declaration at national stage ............................................................ 1.497
Priority, claim for ................................................................................. 1.451, 1.452
Record copy to International Bureau, Transmittal procedures...................... 1.461
Representation by attorney or agent.............................................................. 1.455
Time limits for processing applications ................................................ 1.465, 1.468
Translation:
Of international application for U.S. national phase ...................................1.495
Of publication of international application for provisional rights ..............1.417
United States as:
Designated or Elected Office ........................................................................1.414
International Preliminary Examining Authority ........................................1.416
International Searching Authority..............................................................1.413
Receiving Office ...........................................................................................1.412
Unity of invention:
Before International Searching Authority .........................................1.475, 1.476
Before International Preliminary Examining Authority.............................1.488
National stage .....................................................................................1.475, 1.499
Protest to lack of ................................................................................1.477, 1.489
Withdrawal of international application, designations, priority claims,
demands and elections............................................................. 1.421(g), 1.431(d)
Patent Law Treaty:
Model International Forms .................................................................. 1.76, 3.31(h)
Patent term adjustment due to examination delay .................................. 1.702-1.705
Application for................................................................................................ 1.705
Determination ................................................................................................ 1.705
Grounds for ..................................................................................................... 1.702
Period of adjustment ...................................................................................... 1.703
Reduction of period of adjustment ................................................................. 1.704
Patent term extension due to examination delay ............................................. 1.701
Patent term extension due to regulatory review period. (See Extension of patent
term due to regulatory review period (35 U.S.C. 156))
Patentee notified of interference........................................................... 41.101, 41.203
Patents. (see also Allowance and issue of Patent):
Available for license or sale, publication of notice ...................................... 1.21(i)
Certified copies of ............................................................................................ 1.13
Correction of errors in ......................................................... 1.171, 1.322, 1.323, 1.324
Delivery of ...................................................................................................... 1.315
Disclaimer ...................................................................................................... 1.321
Identification required in letters concerning .................................................... 1.5
Obtainable by civil action ......................................................................... 90.1-90.3
Price of copies .................................................................................................. 1.19
Records of, open to public ................................................................................ 1.11
Reissuing of, when defective................................................................... 1.171-1.178
Payment of fees................................................................................................... 1.23
Person, definition for small entity purposes............................................... 1.27(a)(1)
Personal attendance unnecessary ......................................................................... 1.2
Petition for reissue ................................................................................... 1.171, 1.172
Patent Trial and Appeal Board. (See Appeal to Patent Trial and Appeal Board,
Inter Partes Review, Post-Grant Review, Derivation Proceeding, Patent Trial
Practice and Procedure, and Interferences)
Patent Trial Practice and Procedure (see also inter partes review, post-grant re-
view, covered business method patent review, and derivation proceeding)
General..................................................................................................... 42.1-42.14
Policy ............................................................................................................42.1
Definitions .....................................................................................................42.2
Jurisdiction ...................................................................................................42.3
Notice of trial ................................................................................................42.4
252
Index I
Conduct of the proceeding .............................................................................42.5

Filing of documents, including exhibits; service ...........................................42.6
Management of the record .............................................................................42.7
Mandatory notices.........................................................................................42.8
Action by patent owner .................................................................................42.9
Counsel.........................................................................................................42.10
Duty of candor; signing papers; representations to the Board; sanc-
tions .......................................................................................................42.11
Sanctions .....................................................................................................42.12
Citation of authority ...................................................................................42.13
Public availability .......................................................................................42.14
Fees................................................................................................................. 42.15
Petition and Motion Practice................................................................. 42.20-42.25
General.........................................................................................................42.20
Notice of basis for relief ...............................................................................42.21
Content of petitions and motions.................................................................42.22
Oppositions and replies ................................................................................42.23
Type-volume orpage and word count limits for petitions, motions,
oppositions and replies...........................................................................42.24
Default filing times......................................................................................42.25
Testimony and Production ..................................................................... 42.51-42.65
Discovery .....................................................................................................42.51
Compelling testimony and production .........................................................42.52
Taking testimony ........................................................................................42.53
Protective order ...........................................................................................42.54
Confidential information in a petition.........................................................42.55
Expungement of confidential information ...................................................42.56
Admissibility ...............................................................................................42.61
Applicability of the Federal Rules of Evidence............................................42.62
Form of evidence..........................................................................................42.63
Objection; motion to exclude .......................................................................42.64
Expert testimony; tests and data.................................................................42.65
Oral Argument, Decision, and Settlement ................................................. 42.70-74
Oral argument ..............................................................................................42.70
Decision on petitions or motions .................................................................42.71
Termination of trial.....................................................................................42.72
Judgment .....................................................................................................42.73
Settlement ...................................................................................................42.74
Certificate....................................................................................................... 42.80
Petition to the Director:
Fees .................................................................................................................. 1.17
For delayed payment of issue fee.................................................................... 1.137
For license for foreign filing ............................................................................ 5.12
For the revival of an abandoned application .................................................. 1.137
From formal objections or requirements............................................... 1.113, 1.181
From requirement for restriction.......................................................... 1.129, 1.144
General requirements ..................................................................................... 1.181
In interferences ................................................................................................ 41.3
In reexamination ........................................................................................ 1.515(c)
On refusal of examiner to admit amendment ................................................. 1.127
Petition to accept an unintentionally delayed claim for domestic ben-
efit.............................................................................................................. 1.78
Petition to accept an unintentionally delayed claim for foreign pri-
ority ........................................................................................................... 1.55
Questions not specifically provided for........................................................... 1.182
Suspension of rules ......................................................................................... 1.183
To exercise supervisory authority .................................................................. 1.181
253
To make special .............................................................................................. 1.102

Plant patent applications:
Applicant................................................................................................. 1.42, 1.162
Claim .............................................................................................................. 1.164
Declaration ..................................................................................................... 1.162
Description ..................................................................................................... 1.162
Drawings ......................................................................................................... 1.165
Examination ................................................................................................... 1.167
Fee for copies ................................................................................................... 1.19
Filing fee ...................................................................................................... 1.16(c)
Issue fee........................................................................................................ 1.18(c)
Latin named genus and species ............................................... 1.76(b)(3), 1.163(c)(4)
Oath ................................................................................................................ 1.162
Rules applicable.............................................................................................. 1.161
Specification................................................................................................... 1.163
Specimens ....................................................................................................... 1.166
Post issuance fees................................................................................................ 1.20
Post Office receipt as filing date ......................................................................... 1.10
Postal emergency or interruption .............................................................. 1.10(g)-(i)
Post-Grant Review. (See also Patent Trial Practice and Procedure):
General ................................................................................................ 42.200-42.207
Who may petition .......................................................................................42.201
Time for filing ............................................................................................42.202
Fee .....................................................................................................42.15, 42.203
Filing date ..................................................................................................42.206
Preliminary response..................................................................................42.207
Instituting a review ......................................................................................... 42.208
Patent owner response................................................................................42.220
Motion to amend ........................................................................................42.221
Multiple proceedings; joinder .....................................................................42.222
Supplemental information .........................................................................42.223
Discovery ....................................................................................................42.224
Power of attorney. (See Attorneys and agents)
Preliminary amendments .................................................................................. 1.115
Preserved in confidence, applications.......................................................... 1.12, 1.14
Exceptions (status, access or copies available) ................................................ 1.14
Prior art citation in patent files ....................................................................... 1.501
Prior art statement:
Content of ........................................................................................................ 1.98
In reexamination ................................................................................... 1.555, 1.933
To comply with duty of disclosure ................................................................... 1.97
Prior art submission by third party:
In patent application ...................................................................................... 1.290
In patent file................................................................................................... 1.501
In protest against pending unpublished application....................................... 1.291
Prior Invention, affidavit or declaration of, to overcome rejection .................. 1.131
Prior public disclosure, affidavit or declaration of, to overcome rejec-
tion .............................................................................................................. 1.130
Prioritized examination ................................................................................ 1.102(e)
Priority, international applications .................................................................. 1.451
Priority, right of, under treaty or law ................................................................ 1.55
Priority statement in interferences:
Contents of .................................................................................................... 41.204
Correction of statement on motion............................................................... 41.120
254
Index I
Effect of statement ....................................................................................... 41.204

Failure to file ................................................................................................ 41.204
In case of motion to amend interference....................................................... 41.208
May be amended if defective ......................................................................... 41.120
Reliance on prior application........................................................................ 41.204
Requirement for ............................................................................................ 41.204
Service on opposing parties........................................................................... 41.204
When opened to inspection ............................................................................ 41.204
Proclamation as to protection of foreign mask works................................. Part 150
Protests to grant of patent ................................................................................ 1.291
Provisional patent applications:
Claiming the benefit of .................................................................................... 1.78
Converting a nonprovisional to a provisional .......................................... 1.53(c)(2)
Converting a provisional to a nonprovisional .......................................... 1.53(c)(3)
Filing date........................................................................................................ 1.53
Filing fee...................................................................................................... 1.16(d)
General requisites ........................................................................................ 1.51(c)
Later filing of filing fee and cover sheet...................................................... 1.53(g)
Names of all inventors required............................................................ 1.41, 1.53(c)
No right of priority .................................................................................. 1.53(c)(4)
No examination ............................................................................................ 1.53(i)
Papers concerning, must identify provisional applications as such, and
by application number ............................................................................. 1.5(f)
Parts of complete provisional application ................................................... 1.51(c)
Processing fees.............................................................................................. 1.17(i)
Revival of........................................................................................................ 1.137
When abandoned ........................................................................................... 1.53(i)
Public information....................................................................................... Part 102
Fee ................................................................................................................ 1.17(j)
Publication:
Of reexamination certificate .......................................................... 1.570(f), 1.997(f)
Publication of application ................................................................................. 1.211
Early publication............................................................................................ 1.219
Express abandonment to avoid publication ................................................ 1.138(c)
Fee.................................................................................................................... 1.18
Nonpublication request................................................................................... 1.213
Publication of redacted copy .......................................................................... 1.217
Republication ................................................................................................. 1.221
Voluntary publication .................................................................................... 1.221
Published application
Access to ................................................................................................... 1.11, 1.14
Certified copies................................................................................................. 1.13
Contents.......................................................................................................... 1.215
Definition of published application ............................................................... 1.9(c)
Records of, open to public......................................................................... 1.11, 1.12
Republication of ............................................................................................. 1.221
Third party submission in .............................................................................. 1.290
R
RCE (Request for continued examination) ........................................................ 1.114
Reasons for allowance ................................................................................... 1.104(e)
Reconsideration of Office action........................................................................ 1.112
Reconstruction of lost files ............................................................................... 1.251
Recording of assignments. (See Assignments and recording)
Records of the Patent and Trademark Office ............................................... 1.11-1.15
Redacted publication of application .................................................................. 1.217
Reexamination:
255
Amendments, manner of making................................................................ 1.121(c)

Announcement in Official Gazette................................................................. 1.11(c)
Correction of inventorship.............................................................................. 1.530
Correspondence address................................................................................ 1.33(c)
Ex parte proceedings
Amendments, manner of making ......................................................1.21(j), 1.530
Appeal to Board ...........................................................................................41.31
Appeal to C.A.F.C. ..................................................................................90.1-90.3
Civil action under 35 U.S.C. 145 ...............................................................90.1-90.3
Concurrent with interference, reissue, other reexamination, litiga-
tion or office proceedings(s) ...................................................................1.565
Conduct of ....................................................................................................1.550
Duty of disclosure in ....................................................................................1.555
Examiner’s determination to grant or refuse request for ............................1.515
Extensions of time ...................................................................................1.550(c)
Initiated by the Director..............................................................................1.520
Interviews in ................................................................................................1.560
Issuance of certificate at conclusion of........................................................1.570
Order for reexamination by examiner ..........................................................1.525
Patent owner’s statement ...................................................................1.530, 1.540
Processing of prior art citations during.......................................................1.502
Reply to patent owner’s statement to third party requester ..............1.535, 1.540
Request for ...................................................................................................1.510
Scope of ........................................................................................................1.552
Service of papers ..........................................................................................1.248
Examiner’s action........................................................................................... 1.104
Fee ............................................................................................................... 1.20(c)
Fee charged to deposit account........................................................................ 1.25
Identification in letter .................................................................................. 1.5(d)
Inter partes proceedings ............................................................................. 1.902-907
Amendments, manner of making............................................1.121(j), 1.530, 1.941
Appeal to Board ...........................................................................................41.61
Appeal to C.A.F.C.........................................................................................1.983
Civil action under 35 U.S.C. 145 not available .........................................90.1-90.3
Concurrent with interference, reissue, other reexamination, litiga-
tion or office proceedings(s) ..........................................................1.565, 1.985
Conduct of ....................................................................................................1.937
Duty of disclosure in ...........................................................................1.555, 1.933
Examiner’s determination to grant or refuse request for ....................1.923-1.927
Extensions of time .......................................................................................1.956
Filing date of request for .............................................................................1.919
Issuance of certificate at conclusion of........................................................1.997
Merged with concurrent reexamination proceedings ...................................1.989
Merged with reissue application ..................................................................1.991
Notice of, in the Official Gazette ...................................................................1.904
Persons eligible to file request for ...............................................................1.903
Processing of prior art citations during.......................................................1.902
Scope of ........................................................................................................1.906
Service of papers .................................................................................1.248, 1.903
Submission of papers by the public ..............................................................1.905
Subsequent requests for ...............................................................................1.907
Suspension due to concurrent interference..................................................1.993
Suspension due to litigation ........................................................................1.987
Information Disclosure Statements ........................................................ 1.98, 1.555
Open to public .............................................................................................. 1.11(d)
Reconsideration before final action................................................................ 1.112
Refund of fee .................................................................................................... 1.26
Reply to action ............................................................................................... 1.111
256
Index I
Revival of termination examination .............................................................. 1.137

Reference characters in drawings............................................................ 1.74, 1.84(p)
References cited on examination................................................................... 1.104(d)
Refund of money paid by mistake ....................................................................... 1.26
Refund of international application filing and processing fees ......................... 1.446
Register of Government interest in patents........................................................ 3.58
Rehearing:
Of appeal decisions by Patent Trial and Appeal Board................................... 41.52
Request for, time for appeal after action on .................................................... 90.3
Reissues:
Amendments ................................................................................................... 1.173
Applicants, assignees ...................................................................................... 1.172
Application for reissue.................................................................................... 1.171
Application made and sworn to by inventor, if living .................................... 1.172
Declaration ..................................................................................................... 1.175
Drawings................................................................................ 1.173(a)(2), 1.173(b)(3)
Examination of reissue ................................................................................... 1.176
Filed during interference.................................................................... 41.202, 41.203
Filing during reexamination ................................................................. 1.565, 1.985
Filing fee .......................................................................................................... 1.16
Filing of announced in Official Gazette ......................................................... 1.11(b)
Grounds for and requirements ............................................... 1.171-1.173, 1.175-1.178
Issue fee ....................................................................................................... 1.18(a)
Oath ................................................................................................................ 1.175
Open to public .................................................................................................. 1.11
Original claims subject to reexamination ...................................................... 1.176
Original patent surrendered ........................................................................... 1.178
Reissue in divisions ........................................................................................ 1.177
Restriction...................................................................................................... 1.176
Specification................................................................................................... 1.173
Take precedence in order of examination....................................................... 1.176
To contain no new matter .......................................................................... 1.173(a)
What must accompany application........................................................ 1.171, 1.172
Rejection:
After two rejections appeal may be taken from examiner to Board of
Appeals ............................................................................................ 1.191, 41.31
Applicant will be notified of rejection with reasons and references ....... 1.104(a)(2)
Examiner may rely on admissions by applicant or patent owner, or
facts within examiner’s knowledge................................................... 1.104(c)(3)
Final ............................................................................................................... 1.113
Formal objections........................................................................................... 1.104
On account of invention shown by others but not claimed, how over-
come ......................................................................................................... 1.131
References will be cited .............................................................................. 1.104(c)
Requisites of notice of .................................................................................... 1.104
Reply brief ......................................................................................................... 41.41
Reply by applicant or patent owner .................................................................. 1.111
Reply by requester.................................................................................... 1.535, 1.947
Representative capacity ................................................................................. 1.34(a)
Request for continued examination(RCE) ......................................................... 1.114
Request for reconsideration............................................................................... 1.112
Request for ex parte reexamination ................................................................... 1.510
Request for inter partes reexamination ...................................................... 1.913-1.927
Requirement for information ............................................................................ 1.105
Reservation clauses not permitted...................................................................... 1.79
Response time to Office action .......................................................................... 1.134
Restriction of application ......................................................................... 1.141-1.146
Claims to nonelected invention withdrawn .................................................... 1.142
257
Constructive election ..................................................................................... 1.145

Petition from requirements for ............................................................. 1.129, 1.144
Provisional election........................................................................................ 1.143
Reconsideration of requirement ..................................................................... 1.143
Reissue............................................................................................................ 1.176
Requirement for.............................................................................................. 1.142
Subsequent presentation of claims for different invention ............................ 1.145
Transitional procedures.................................................................................. 1.129
Return of correspondence ................................................................................. 1.5(a)
Revival of abandoned application or terminated or limited reexamina-
tion proceeding ............................................................................................ 1.137
Unintentional abandonment fee ................................................................. 1.17(m)
Revocation of power of attorney or authorization of agent............................ 1.36(a)
Rules of Practice:
Amendments to rules will be published .......................................................... 1.351
S
Saturday, when last day falls on ................................................................ 1.7, 1.9(h)
Scope of reexamination proceedings......................................................... 1.552, 1.906
Secrecy order................................................................................................... 5.1-5.5
Serial number of application (see also Application Number) ............ 1.5, 1.53, 1.54(b)
Service of notices:
For taking testimony.................................................................................... 41.157
In contested cases ......................................................................................... 41.101
Of appeal to the Court of Appeals for the Federal Circuit......................... 90.1-90.3
Service of papers................................................................................................ 1.248
Shortened period for reply ................................................................................. 1.134
Signature:
Handwritten............................................................................................... 1.4(d)(1)
Implicit certifications .......................................................................... 1.4(d), 11.18
S-Signature................................................................................................... 1.4(d)(2)
To a written assertion of small entity status .......................................... 1.27(c)(2)
To amendments and other papers ................................................................ 1.33(b)
To an application for extension of patent term .............................................. 1.730
To express abandonment................................................................................. 1.138
To oath ............................................................................................................. 1.63
To reissue oath or declaration ........................................................................ 1.172
When copy is acceptable .................................................................................... 1.4
Small business concern:
Definition (for small entity purposes)...................................................... 1.27(a)(2)
Small entity:
Definition..................................................................................................... 1.27(a)
License to Federal Agency ....................................................................... 1.27(a)(4)
Status establishment................................................................................ 1.27, 1.28
Status update ....................................................................................... 1.27(g), 1.28
Written assertion ......................................................................................... 1.27(c)
Solicitor’s address ........................................................................................ 1.1(a)(3)
Species of invention claimed .................................................................... 1.141, 1.146
Specification (see also Application for patent, Claims):
Abstract ........................................................................................................... 1.72
Amendments to...................................................................................... 1.121, 1.125
Arrangement of .............................................................................. 1.77, 1.154, 1.163
Best mode ......................................................................................................... 1.71
Claim ................................................................................................................ 1.75
Contents of ................................................................................................ 1.71-1.75
Copyright notice .......................................................................................... 1.71(d)
Cross-references to other applications ............................................................. 1.78
258
Index I
Description of the invention ............................................................................ 1.71

Filed by reference ........................................................................................ 1.57(a)
If defective, reissue to correct ................................................................ 1.171-1.178
Incorporation by reference of prior filed application................................... 1.57(b)
Mask work notice......................................................................................... 1.71(d)
Must conclude with specific and distinct claim ............................................... 1.75
Must point out new improvements specifically ............................................... 1.71
Must refer by figures to drawings .................................................................... 1.74
Must set forth the precise invention ................................................................ 1.71
Object of the invention..................................................................................... 1.73
Order of arrangement in framing ..................................................................... 1.77
Paper, writing, margins ................................................................................... 1.52
Paragraph numbering .............................................................................. 1.52(b)(6)
Reference to drawings ...................................................................................... 1.74
Requirements of ........................................................................................ 1.71-1.75
Reservation clauses not permitted................................................................... 1.79
Substitute ....................................................................................................... 1.125
Summary of the invention ............................................................................... 1.73
Title of the invention................................................................................... 1.72(a)
To be rewritten, if necessary .......................................................................... 1.125
Specimens. (See Models and exhibits)
Specimens of composition of matter to be furnished when required................... 1.93
Specimens of plants ........................................................................................... 1.166
Statutory disclaimer fee ................................................................................. 1.20(d)
Sufficient funds in deposit account..................................................................... 1.25
Suit in equity. (See Civil action)
Summary of invention ........................................................................................ 1.73
Sunday, when last day falls on ................................................................... 1.7. 1.9(h)
Supervisory authority, petition to Director to exercise.................................... 1.181
Supplemental oath/declaration ........................................................................... 1.67
Supplemental Examination of Patents:
Conclusion of .................................................................................................. 1.625
Conduct of....................................................................................................... 1.620
Content of request .......................................................................................... 1.610
Filing of papers in supplemental examination ............................................... 1.601
Format of papers filed .................................................................................... 1.615
Procedure after conclusion ............................................................................. 1.625
Publication of certificate ............................................................................... 1.625
Surcharge for completion of nonprovisional application after filing
date................................................................................................. 1.16(f), 1.53(f)
Suspension of action by Office........................................................................... 1.103
CPA, Design................................................................................................ 1.103(b)
Deferral of examination ............................................................................. 1.103(d)
For cause .................................................................................................... 1.103(a)
RCE............................................................................................................. 1.103(c)
Suspension of ex parte prosecution during interference ................................... 41.103
Suspension of rules ............................................................................................ 1.183
Symbols for drawings...................................................................................... 1.84(n)
Symbols for nucleotide and/or amino acid sequence data.................................. 1.822
T
Tables in patent applications.............................................................................. 1.58
Technological Invention .................................................................................. 42.301
Terminal disclaimer .......................................................................................... 1.321
Testimony by Office employees .................................................... 15 C.F.R. Part 15a
Testimony in interferences:
259
Additional time for taking ............................................................................... 41.4

Assignment of times for taking .................................................................... 41.157
Certification and filing by officer ................................................................. 41.157
Copies of ........................................................................................................ 41.157
Depositions must be filed .............................................................................. 41.157
Discovery ...................................................................................................... 41.150
Effect of errors and irregularities in deposition ................................. 41.155, 41.157
Evidence must comply with rules ................................................................. 41.152
Examination of witnesses.............................................................................. 41.157
Form of deposition ........................................................................................ 41.157
Formal objections to .......................................................................... 41.155, 41.157
Formalities in preparing depositions ............................................................ 41.157
In foreign countries ............................................................................ 41.156, 41.157
Manner of taking testimony of witnesses ..................................................... 41.157
Notice of examination of witnesses............................................................... 41.157
Objections noted in depositions .......................................................... 41.155, 41.157
Objections to formal matters ............................................................. 41.155, 41.157
Officer’s certificate ....................................................................................... 41.157
Persons before whom depositions may be taken ........................................... 41.157
Service of notice............................................................................................ 41.157
Stipulations or agreements concerning ........................................................ 41.157
Taken by depositions .................................................................................... 41.157
Time for taking ............................................................................................. 41.157
Third-party submission in published application .............................................. 1.290
Time expiring on Saturday, Sunday, or holiday ........................................ 1.7, 1.9(h)
Time for payment of issue fee............................................................................ 1.311
Time for reply by applicant ...................................................................... 1.134, 1.136
Time for reply by patent owner ................................................................ 1.530, 1.945
Time for reply by requester ...................................................................... 1.535, 1.947
Time for reply to Office action ................................................................. 1.134, 1.136
Time, periods of .................................................................................................... 1.7
Timely filing of correspondence .................................................................... 1.8, 1.10
Title of invention ............................................................................................ 1.72(a)
Title reports, fee for.................................................................................... 1.19(b)(4)
Transitional procedures..................................................................................... 1.129
U
Unintentional abandonment .............................................................................. 1.137
Unintentional delay in reexamination ................................................. 1.550(e), 1.958
United States as:
Designated Office ............................................................................................ 1.414
Elected Office.................................................................................................. 1.414
International Preliminary Examining Authority .......................................... 1.416
International Searching Authority ................................................................ 1.413
Receiving Office .............................................................................................. 1.412
Unlocatable files ................................................................................................ 1.251
Unsigned continuation or divisional application......................................... 1.53, 1.63
Use of file of parent application...................................................................... 1.53(d)
V
Voluntary publication of application ................................................................ 1.221
W
Waiver of confidentiality ............................................................................ 1.53(d)(6)
Withdrawal from issue ....................................................................................... 1.313
Withdrawal of attorney or agent......................................................................... 1.36
260
PART 1—RULES OF PRACTICE IN 2.42 Concurrent use.
2.43 Service mark.
PATENT CASES 2.44 Requirements for a complete collective
mark application.
EDITORIAL NOTE: Part 1 is placed in the 2.45 Requirements for a complete certifi-
separate grouping of parts pertaining to pat- cation mark application; restriction on
ents regulations. certification mark application.
2.46 Principal Register.
2.47 Supplemental Register.
TRADEMARKS 2.48 Office does not issue duplicate registra-
tions.
PART 2—RULES OF PRACTICE IN
DRAWING
TRADEMARK CASES
2.51 Drawing required.
Sec. 2.52 Types of drawings and format for draw-
2.1 [Reserved] ings.
2.2 Definitions. 2.53 Requirements for drawings filed
2.6 Trademark fees. through the TEAS.
2.7 Fastener recordal fees. 2.54 Requirements for drawings submitted
on paper.
REPRESENTATION BY ATTORNEYS OR OTHER
AUTHORIZED PERSONS SPECIMENS
2.11 Applicants may be represented by an 2.56 Specimens.
attorney. 2.57–2.58 [Reserved]
2.12–2.16 [Reserved] 2.59 Filing substitute specimen(s).
2.17 Recognition for representation.
2.18 Correspondence, with whom held. EXAMINATION OF APPLICATION AND ACTION BY
2.19 Revocation or withdrawal of attorney. APPLICANTS
DECLARATIONS 2.61 Action by examiner.

2.62 Procedure for filing response.
2.20 Declarations in lieu of oaths. 2.63 Action after response.
APPLICATION FOR REGISTRATION 2.64 [Reserved]
2.65 Abandonment.
2.21 Requirements for receiving a filing 2.66 Revival of abandoned applications.
date. 2.67 Suspension of action by the Patent and
2.22 Requirements for a TEAS Plus applica- Trademark Office.
tion. 2.68 Express abandonment (withdrawal) of
2.23 Requirements for a TEAS RF applica- application.
tion. 2.69 Compliance with other laws.
2.24 Designation and revocation of domestic
representative by foreign applicant. AMENDMENT OF APPLICATION
2.25 Documents not returnable.
2.27 Pending trademark application index; 2.71 Amendments to correct informalities.
access to applications. 2.72 Amendments to description or drawing
of the mark.
THE WRITTEN APPLICATION 2.73 Amendment to recite concurrent use.
2.74 Form and signature of amendment.
2.31 [Reserved]
2.75 Amendment to change application to
2.32 Requirements for a complete trade-
different register.
mark or service mark application.
2.33 Verified statement for a trademark or 2.76 Amendment to allege use.
service mark. 2.77 Amendments between notice of allow-
2.34 Bases for filing a trademark or service ance and statement of use.
mark application. PUBLICATION AND POST PUBLICATION
2.35 Adding, deleting, or substituting bases.
2.36 Identification of prior registrations. 2.80 Publication for opposition.
2.37 Description of mark. 2.81 Post publication.
2.38 Use by predecessor or by related com- 2.82 Marks on Supplemental Register pub-
panies. lished only upon registration.
2.39 [Reserved] 2.83 Conflicting marks.

2.41 Proof of distinctiveness under section 2.84 Jurisdiction over published applica-
2(f). tions.
261
CLASSIFICATION 2.132 Involuntary dismissal for failure to
take testimony.
2.85 Classification schedules.
2.133 Amendment of application or registra-
2.86 Multiple-class applications. tion during proceedings.
2.87 Dividing an application. 2.134 Surrender or voluntary cancellation of
POST NOTICE OF ALLOWANCE registration.
2.135 Abandonment of application or mark.
2.88 Statement of use after notice of allow- 2.136 Status of application on termination
ance. of proceeding.
2.89 Extensions of time for filing a state-
ment of use. APPEALS
2.141 Ex parte appeals from action of trade-
INTERFERENCES AND CONCURRENT USE
mark examining attorney.
PROCEEDINGS
2.142 Time and manner of ex parte appeals.
2.91 Declaration of interference. 2.144 Reconsideration of decision on ex parte
2.92 Preliminary to interference. appeal.
2.93 Institution of interference. 2.145 Appeal to court and civil action.
2.94–2.95 [Reserved]
2.96 Issue; burden of proof. PETITIONS AND ACTION BY THE DIRECTOR
2.97 [Reserved] 2.146 Petitions to the Director.
2.98 Adding party to interference. 2.147 [Reserved]
2.99 Application to register as concurrent 2.148 Director may suspend certain rules.
user.
CERTIFICATE
OPPOSITION
2.151 Certificate.
2.101 Filing an opposition.
2.102 Extension of time for filing an opposi- PUBLICATION OF MARKS REGISTERED UNDER
tion. 1905 ACT
2.104 Contents of opposition. 2.153 Publication requirements.
2.105 Notification to parties of opposition 2.154 Publication inOfficial Gazette.
proceeding(s). 2.155 Notice of publication.
2.106 Answer. 2.156 Not subject to opposition; subject to
2.107 Amendment of pleadings in an opposi- cancellation.
tion proceeding.
REREGISTRATION OF MARKS REGISTERED
CANCELLATION UNDER PRIOR ACTS
2.111 Filing petition for cancellation. 2.158 Reregistration of marks registered
2.112 Contents of petition for cancellation. under Acts of 1881, 1905, and 1920.
2.113 Notification to parties of cancellation
proceeding. CANCELLATION FOR FAILURE TO FILE AFFI-
2.114 Answer. DAVIT OR DECLARATION DURING SIXTH
2.115 Amendment of pleadings in a cancella- YEAR
tion proceeding. 2.160 Affidavit or declaration of continued
use or excusable nonuse required to avoid
PROCEDURE IN Inter Partes PROCEEDINGS
cancellation of registration.
2.116 Federal Rules of Civil Procedure. 2.161 Requirements for a complete affidavit
2.117 Suspension of proceedings. or declaration of continued use or excus-
2.118 Undelivered Office notices. able nonuse.
2.119 Service and signing of papers. 2.162 Notice to registrant.
2.120 Discovery. 2.163 Acknowledgment of receipt of affi-
2.121 Assignment of times for taking testi- davit or declaration.
mony. 2.164 Correcting deficiencies in affidavit or
2.122 Matters in evidence. declaration.
2.123 Trial testimony in inter partes cases. 2.165 Petition to Director to review refusal.
2.124 Depositions upon written questions. 2.166 Affidavit of continued use or excusable
2.125 Filing and service of testimony. nonuse combined with renewal applica-
2.126 Form of submissions to the Trade- tion.
mark Trial and Appeal Board.
AFFIDAVIT OR DECLARATION UNDER SECTION 15
2.127 Motions.
2.128 Briefs at final hearing. 2.167 Affidavit or declaration under section
2.129 Oral argument; reconsideration. 15.
2.130 New matter suggested by the trade- 2.168 Affidavit or declaration under section
mark examining attorney. 15 combined with affidavit or declaration

2.131 Remand after decision in inter partes under sections 8 or 71, or with renewal
proceeding. application.
262
CORRECTION, DISCLAIMER, SURRENDER, ETC. § 2.1 [Reserved]
2.171 New certificate on change of owner-
ship. § 2.2 Definitions.
2.172 Surrender for cancellation. (a) The Act as used in this part means
2.173 Amendment of registration. the Trademark Act of 1946, 60 Stat. 427,
2.174 Correction of Office mistake. as amended, codified in 15 U.S.C. 1051 et
2.175 Correction of mistake by owner. seq.
2.176 Consideration of above matters. (b) Entity as used in this part in-
TERM AND RENEWAL
cludes both natural and juristic per-
sons.
2.181 Term of original registrations and re- (c) Director as used in this chapter,
newals. except for part 11, means the Under
2.182 Time for filing renewal application. Secretary of Commerce for Intellectual
2.183 Requirements for a complete renewal Property and Director of the United
application.
States Patent and Trademark Office.
2.184 Refusal of renewal.
(d) Federal holiday within the District
2.185 Correcting deficiencies in renewal ap-
plication. of Columbia means any day, except Sat-
2.186 Petition to Director to review refusal urdays and Sundays, when the United
of renewal. States Patent and Trademark Office is
2.187 [Reserved] officially closed for business for the en-
tire day.
GENERAL INFORMATION AND CORRESPONDENCE (e) The term Office means the United
IN TRADEMARK CASES
States Patent and Trademark Office.
2.188–2.189 [Reserved] (f) The acronym TEAS means the
2.190 Addresses for trademark correspond- Trademark Electronic Application Sys-
ence with the United States Patent and tem, available at http://www.uspto.gov.
Trademark Office. (g) The acronym ESTTA means the
2.191 Business to be transacted in writing. Electronic System for Trademark
2.192 Business to be conducted with deco- Trials and Appeals, available at
rum and courtesy.
www.uspto.gov.
2.193 Trademark correspondence and signa-
ture requirements.
(h) The term international application
2.194 Identification of trademark applica- as used in this part means, in addition
tion or registration. to the definition in section 60 of the
2.195 Receipt of trademark correspondence. Act, an application seeking an exten-
2.196 Times for taking action: Expiration on sion of protection of an international
Saturday, Sunday or Federal holiday. registration in an initial designation
2.197 Certificate of mailing or transmission. filed under the Protocol Relating to
2.198 Filing of correspondence by Priority the Madrid Agreement Concerning the
Mail Express®. International Registration of Marks.
TRADEMARK RECORDS AND FILES OF THE
(i) The term subsequent designation as
PATENT AND TRADEMARK OFFICE used in this part means a request for
extension of protection of an inter-
2.200 Assignment records open to public in- national registration made after the
spection.
International Bureau registers the
2.201 Copies and certified copies.
mark on the International Register.
FEES AND PAYMENT OF MONEY IN TRADEMARK (j) The term holder as used in this
CASES part means, in addition to the defini-
2.206 Trademark fees payable in advance.
tion of a ‘‘holder of an international
2.207 Methods of payment. registration’’ in section 60 of the Act,
2.208 Deposit accounts. the natural or juristic person in whose
2.209 Refunds. name an international registration
seeking an extension of protection to
AUTHORITY: 15 U.S.C. 1113, 15 U.S.C. 1123, 35 the United States is recorded on the
U.S.C. 2, Section 10(c) of Pub. L. 112–29, un-
less otherwise noted.
International Register.
(k) The term use in commerce or use of
SOURCE: 30 FR 13193, Oct. 16, 1965, unless the mark in commerce as used in this
otherwise noted. part means, in addition to the defini-
EDITORIAL NOTE: Nomenclature changes to tion of ‘‘use in commerce’’ in section 45

part 2 appear at 68 FR 14337, Mar. 25, 2003. of the Act:
263
§ 2.6 37 CFR Ch. I (7–1–16 Edition)
(1) For a trademark or service mark, lective organization as specified in a

use of the mark in commerce by an ap- U.S. application or international appli-
plicant, owner, or holder on or in con- cation/subsequent designation; and
nection with the goods or services spec- (3) For a certification mark, that an
ified in a U.S. application, amendment applicant or holder has a bona fide in-
to allege use, statement of use, or affi- tention, and is entitled, to exercise le-
davit or declaration of use or excusable gitimate control over the use of the
nonuse; mark in commerce by authorized users
(2) For a collective trademark or col- on or in connection with the goods or
lective service mark, use of the mark services specified in a U.S. application
in commerce by members on or in con- or international application/subsequent
nection with the goods or services spec- designation.
ified in a U.S. application, amendment (n) The term verified statement, and
to allege use, statement of use, or affi- the terms verify, verified, or verification
davit or declaration of use or excusable as used in this part refers to a state-
nonuse; ment that is sworn to, made under oath
(3) For a collective membership or in an affidavit, or supported by a
mark, use of the mark in commerce by declaration under § 2.20 or 28 U.S.C.
members to indicate membership in 1746, and signed in accordance with the
the collective organization as specified requirements of § 2.193.
in a U.S. application, amendment to al- [54 FR 37588, Sept. 11, 1989, as amended at 68
lege use, statement of use, or affidavit FR 48289, Aug. 13, 2003; 68 FR 55762, Sept. 26,
or declaration of use or excusable non- 2003; 73 FR 47685, Aug. 14, 2008; 78 FR 20197,
use; and Apr. 3, 2013; 80 FR 33178, June 11, 2015]
(4) For a certification mark, use of
the mark in commerce by authorized § 2.6 Trademark fees.
users on or in connection with the The Patent and Trademark Office re-
goods or services specified in a U.S. ap- quires the following fees and charges:
plication, amendment to allege use, (a) Trademark process fees.
statement of use, or affidavit or dec-
(1) Application filing fees.
laration of use or excusable nonuse.
(i) For filing an application on paper,
(l) The term bona fide intention to use per class ..........................................$375.00
the mark in commerce as used in this (ii) For filing an application through
part means, for a trademark or service TEAS, per class ..............................$325.00
mark, that an applicant or holder has a (iii) For filing a TEAS Reduced Fee
bona fide intention to use the mark in (RF) application through TEAS
commerce on or in connection with the under § 2.23, per class ..........................$275
goods or services specified in a U.S. ap- (iv) For filing a TEAS Plus applica-
tion through TEAS under § 2.22,
plication or international application/
per class ..........................................$225.00
subsequent designation. (v) Additional processing fee under
(m) The term bona fide intention, and §§ 2.22(c) or 2.23(c), per class..............$50.00
is entitled, to exercise legitimate control (2) For filing an amendment to allege
over the use of the mark in commerce as use under section 1(c) of the Act,
used in this part means: per class ..........................................$100.00
(1) For a collective trademark or col- (3) For filing a statement of use under
lective service mark, that an applicant section 1(d)(1) of the Act, per class
........................................................$100.00
or holder has a bona fide intention, and
(4) For filing a request under section
is entitled, to exercise legitimate con- 1(d)(2) of the Act for a six-month
trol over the use of the mark in com- extension of time for filing a
merce by members on or in connection statement of use under section
with the goods or services specified in 1(d)(1) of the Act, per class .............$150.00
a U.S. application or international ap- (5) Application for renewal of a reg-
plication/subsequent designation; istration fees.
(2) For a collective membership (i) For filing an application for re-
newal of a registration on paper,
mark, that an applicant or holder has a
per class ..........................................$400.00
bona fide intention, and is entitled, to (ii) For filing an application for re-
exercise legitimate control over the
newal of a registration through

use of the mark in commerce by mem- TEAS, per class ..............................$300.00
bers to indicate membership in the col- (6) Additional fee for filing a renewal
264
application during the grace pe- (i) First property in a document ............$40.00
riod, per class .................................$100.00 (ii) For each additional property in
(7) For filing to publish a mark under the same document ..........................$25.00
section 12(c), per class ....................$100.00 (7) For assignment records, abstract of
(8) For issuing a new certificate of reg- title and certification, per reg-
istration upon request of reg-
istration ...........................................$25.00
istrant.............................................$100.00
(9) For a certificate of correction of (8) Marginal cost, paid in advance, for
registrant’s error ............................$100.00 each hour of terminal session
(10) For filing a disclaimer to a reg- time, including print time, using
istration .........................................$100.00 X-Search capabilities, prorated for
(11) For filing an amendment to a reg- the actual time used. The Director
istration .........................................$100.00 may waive the payment by an in-
(12) For filing an affidavit under sec- dividual for access to X-Search
tion 8 of the Act, per class ..............$100.00 upon a showing of need or hard-
(13) For filing an affidavit under sec- ship, and if such waiver is in the
tion 15 of the Act, per class ............$200.00 public interest..................................$40.00
(14) Additional fee for filing a section (9) Self-service copy charge, per page
8 affidavit during the grace period, ...........................................................$0.25
per class ..........................................$100.00
(10) Labor charges for services, per
(15) For petitions to the Director .........$100.00
(16) For filing a petition to cancel, per hour or fraction thereof ...................$40.00
class ................................................$300.00 (11) For items and services that the
(17) For filing a notice of opposition, Director finds may be supplied, for
per class ..........................................$300.00 which fees are not specified by
(18) For ex parte appeal to the Trade- statute or by this part, such
mark Trial and Appeal Board, per charges as may be determined by
class ................................................$100.00 the Director with respect to each
(19) Dividing an application, per new such item or service ...............Actual Cost
application created .........................$100.00 (12) For processing each payment re-
(20) For correcting a deficiency in a fused (including a check returned
section 8 affidavit ...........................$100.00 ‘‘unpaid’’) or charged back by a fi-
(21) For correcting a deficiency in a nancial institution ...........................$50.00
renewal application ........................$100.00
(13) Deposit accounts:
(b) Trademark service fees. (i) For establishing a deposit account
......................................................... $10.00
(1) For printed copy of registered
(ii) Service charge for each month
mark, copy only. Service includes
preparation of copies by the Office when the balance at the end of the
within two to three business days month is below $1,000 .......................$25.00
and delivery by United States [56 FR 65155, Dec. 13, 1991; 56 FR 66670, Dec.
Postal Service; and preparation of 24, 1991, as amended at 57 FR 38196, Aug. 21,
copies by the Office within one 1992; 59 FR 257, Jan. 4, 1994; 60 FR 41023, Aug.
business day of receipt and deliv- 11, 1995; 62 FR 40453, July 29, 1997; 64 FR 48918,
ery to an Office Box or by elec- Sept. 8, 1999; 64 FR 67486, Dec. 2, 1999; 64 FR
tronic means (e.g., facsimile, elec-
67777, Dec. 3, 1999; 67 FR 79522, Dec. 30, 2002;
tronic mail) .......................................$3.00
67 FR 70850, Nov. 27, 2002; 68 FR 48289, Aug. 13,
(2) Certified or uncertified copy of
2003; 70 FR 2953, Jan. 19, 2005; 70 FR 38773,
trademark application as filed
processed within seven calendar July 6, 2005; 73 FR 67767, Nov. 17, 2008; 79 FR
days ..................................................$15.00 74638, Dec. 16, 2014]
(3) Certified or uncertified copy of a
trademark-related official record § 2.7 Fastener recordal fees.
......................................................... $50.00 (a) Application fee for recordal of in-
(4) Certified copy of a registered mark, show- signia ...............................................$20.00
ing title and/or status: (b) Renewal of insignia recordal.............$20.00
(i) Regular service ..................................$15.00 (c) Surcharge for late renewal of insig-
(ii) Expedited local service.....................$30.00 nia recordal ......................................$20.00
(5) Certified or uncertified copy of [61 FR 55223, Oct. 25, 1996]
trademark records, per document
except as otherwise provided in REPRESENTATION BY ATTORNEYS OR
this section ......................................$25.00
(6) For recording each trademark as- OTHER AUTHORIZED PERSONS
signment, agreement or other doc-

ument relating to the property in AUTHORITY: Secs. 2.11 to 2.19 also issued
a registration or application under 35 U.S.C. 31, 32.
265
§ 2.11 37 CFR Ch. I (7–1–16 Edition)
§ 2.11 Applicants may be represented of a partnership). In the case of joint

by an attorney. applicants or joint registrants, all
Representation before the Office is must sign. Once the applicant, reg-
governed by § 11.14 of this chapter. The istrant, or party has designated a prac-
Office cannot aid in the selection of an titioner(s) qualified to practice under
attorney. § 11.14 of this chapter, that practitioner
may sign an associate power of attor-
[73 FR 47685, Aug. 14, 2008] ney appointing another qualified prac-
§§ 2.12–2.16 [Reserved] titioner(s) as an additional person(s)
authorized to represent the applicant,
§ 2.17 Recognition for representation. registrant, or party. If the applicant,
(a) Authority to practice in trademark registrant, or party revokes the origi-
cases. Only an individual qualified to nal power of attorney (§ 2.19(a)), the
practice under § 11.14 of this chapter revocation discharges any associate
may represent an applicant, registrant, power signed by the practitioner whose
or party to a proceeding before the Of- power has been revoked. If the practi-
fice in a trademark case. tioner who signed an associate power
(b)(1) Recognition of practitioner as withdraws (§ 2.19(b)), the withdrawal
representative. To be recognized as a discharges any associate power signed
representative in a trademark case, a by the withdrawing practitioner upon
practitioner qualified under § 11.14 of acceptance of the request for with-
this chapter may: drawal by the Office.
(i) File a power of attorney that (d) Power of attorney relating to mul-
meets the requirements of paragraph tiple applications or registrations. (1) The
(c) of this section; owner of an application or registration
(ii) Sign a document on behalf of an may appoint a practitioner(s) qualified
applicant, registrant, or party to a pro- to practice under § 11.14 of this chapter
ceeding who is not already represented to represent the owner for all existing
by a practitioner qualified under § 11.14 applications or registrations that have
of this chapter from a different firm; or the identical owner name and attorney
(iii) Appear in person on behalf of an through TEAS.
applicant, registrant, or party to a pro- (2) The owner of an application or
ceeding who is not already represented registration may file a power of attor-
by a practitioner qualified under § 11.14 ney that relates to more than one
of this chapter from a different firm. trademark application or registration,
(2) Signature as certificate of authoriza- or to all existing and future applica-
tion to represent. When a practitioner tions and registrations of that owner,
qualified under § 11.14 of this chapter on paper. A person relying on such a
appears in person or signs a document power of attorney must:
pursuant to paragraph (b) of this sec-
(i) Include a copy of the previously
tion, his or her personal appearance or
filed power of attorney; or
signature shall constitute a representa-
tion to the Office that he or she is au- (ii) Refer to the power of attorney,
thorized to represent the person or en- specifying the filing date of the pre-
tity on whose behalf he or she acts. viously filed power of attorney; the ap-
The Office may require further proof of plication serial number (if known), reg-
authority to act in a representative ca- istration number, or inter partes pro-
pacity. ceeding number for which the original
(c) Requirements for power of attorney. power of attorney was filed; and the
A power of attorney must: name of the person who signed the
(1) Designate by name at least one power of attorney; or, if the applica-
practitioner meeting the requirements tion serial number is not known, sub-
of § 11.14 of this chapter; and mit a copy of the application or a copy
(2) Be signed by the individual appli- of the mark, and specify the filing
cant, registrant, or party to a pro- date.
ceeding pending before the Office, or by (e) Canadian attorneys and agents. (1)
someone with legal authority to bind A Canadian patent agent who is reg-
the applicant, registrant, or party (e.g., istered and in good standing as a pat-
a corporate officer or general partner ent agent under § 11.6(c) may represent
266
parties located in Canada before the ment(s) on behalf of an applicant, reg-

Office in trademark matters. istrant, or party to a proceeding who is
(2) A Canadian attorney or agent who not already represented by another
is registered or in good standing with qualified practitioner from a different
the Canadian Intellectual Property Of- firm, the Office will send correspond-
fice, but not registered as a patent ence to the practitioner transmitting
agent under § 11.6(c), may represent the documents.
parties located in Canada if he or she (3) If an application, registration or
has been authorized to do so by the Di- proceeding is not being prosecuted by a
rector of the Office of Enrollment and
practitioner qualified under § 11.14 of
Discipline, pursuant to § 11.14(f) of this
this chapter and the applicant, reg-
chapter.
(f) Non-lawyers. A non-lawyer may istrant, or party to the proceeding des-
not act as a representative except in ignates a correspondence address in
the limited circumstances set forth in writing, the Office will send cor-
§ 11.14(b) of this chapter. Before any respondence to the designated address
non-lawyer who meets the require- if appropriate.
ments of § 11.14(b) of this chapter may (4) If an application, registration or
take action of any kind with respect to proceeding is not being prosecuted by a
an application, registration or pro- practitioner qualified under § 11.14 of
ceeding, a written authorization must this chapter and the applicant, reg-
be filed, signed by the applicant, registrant, or party to the proceeding has
istrant, or party to the proceeding, or not designated a correspondence ad-
by someone with legal authority to dress in writing, but a domestic rep-
bind the applicant, registrant, or party resentative has been appointed, the Of-
(e.g., a corporate officer or general fice will send correspondence to the do-
partner of a partnership). mestic representative if appropriate.
(g) Duration of power of attorney. (1) (5) If the application, registration or
For purposes of recognition as a rep- proceeding is not being prosecuted by a
resentative, the Office considers a practitioner qualified under § 11.14 of
power of attorney filed while an appli- this chapter, the applicant, registrant,
cation is pending to end when the mark or party to the proceeding has not des-
registers, when ownership changes, or ignated a correspondence address, and
when the application is abandoned.
no domestic representative has been
(2) The Office considers a power of at-
appointed, the Office will send cor-
torney filed after registration to end
respondence directly to the applicant,
when the mark is cancelled or expired,
or when ownership changes. If the registrant, or party to the proceeding.
power was filed in connection with an (6) The Office will send correspond-
affidavit under section 8, 12(c), 15 or 71 ence to only one address in an ex parte
of the Trademark Act, renewal applica- matter.
tion under section 9 of the Act, or re- (7) Once the Office has recognized a
quest for amendment or correction practitioner qualified under § 11.14 of
under section 7 of the Act, the power is this chapter as the representative of an
deemed to end upon acceptance or final applicant or registrant, the Office will
rejection of the filing. communicate and conduct business
only with that practitioner, or with an-
FR 2310, Jan. 16, 2015] other qualified practitioner from the
same firm. The Office will not conduct
§ 2.18 Correspondence, with whom business directly with the applicant or
held. registrant, or with another practi-
(a) Establishing the correspondence ad- tioner from a different firm, unless the
dress. (1) If a written power of attorney applicant or registrant files a revoca-
that meets the requirements of § 2.17 is tion of the power of attorney under
filed, the Office will send correspond- § 2.19(a), and/or a new power of attorney
ence to the practitioner designated in that meets the requirements of § 2.17(c).
the power. A written request to change the cor-
(2) If a practitioner qualified under respondence address does not revoke a

§ 11.14 of this chapter transmits a docu- power of attorney.
267
§ 2.19 37 CFR Ch. I (7–1–16 Edition)
(b) Changing the correspondence ad- change the address in accordance with
dress. (1) If a physical or e-mail cor- the requirements of paragraph (b)(2) of
respondence address changes, the appli- this section is required to change the
cant, registrant, or party to a pro- address during the pendency of that fil-
ceeding must file a written request to ing.
change the correspondence address.
The request should be promptly filed. [74 FR 54906, Oct. 26, 2009]
(2) A request to change the cor-
§ 2.19 Revocation or withdrawal of at-
respondence address must be made in torney.
writing, signed by the applicant, reg-
istrant, or party to a proceeding, some- (a) Revocation. (1) Authority to rep-
one with legal authority to bind the resent an applicant, registrant or party
applicant, registrant, or party (e.g., a to a proceeding before the Office may
corporate officer or general partner of be revoked at any stage in the pro-
a partnership), or a practitioner quali- ceedings of a trademark case, upon
fied to practice under § 11.14 of this written notification signed by the ap-
chapter, in accordance with § 2.193(e)(9). plicant, registrant, or party to the pro-
(3) If an applicant or registrant files ceeding, or by someone with legal au-
a new power of attorney that meets the thority to bind the applicant, reg-
requirements of § 2.17(c), the Office will istrant, or party (e.g., a corporate offi-
change the correspondence address to cer or general partner of a partner-
that of the practitioner named in the ship). In the case of joint applicants or
power. joint registrants, all must sign.
(4) If a practitioner qualified under (2) When a power of attorney is re-
§ 11.14 of this chapter transmits a docu- voked, the Office will communicate di-
ment(s) on behalf of an applicant, reg- rectly with the applicant, registrant,
istrant, or party to a proceeding who is or party to the proceeding, or with the
not already represented by another new attorney or domestic representa-
qualified practitioner, the Office will tive if appropriate.
construe this as including a request to (3) A request to change the cor-
change the correspondence address to respondence address does not revoke a
that of the practitioner, and will send power of attorney.
correspondence to the practitioner. (4) A new power of attorney that
(c) Post registration filings under sec- meets the requirements of § 2.17(c) will
tions 7, 8, 9, 12(c), 15, and 71. (1) Even if be treated as a revocation of the pre-
there is no new power of attorney or vious power.
written request to change the cor-
(b) Withdrawal of attorney. If the re-
respondence address, the Office will
quirements of § 11.116 of this chapter
change the correspondence address
are met, a practitioner authorized to
upon the examination of an affidavit
represent an applicant, registrant, or
under section 8, 12(c), 15 or 71 of the
party to a proceeding in a trademark
Trademark Act, renewal application
case may withdraw upon application to
under section 9 of the Act, or request
and approval by the Director or, when
for amendment or correction under sec-
applicable, upon motion granted by the
tion 7 of the Act. If a practitioner
Trademark Trial and Appeal Board.
qualified under § 11.14 of this chapter
transmits the affidavit, renewal appli- The practitioner should file the request
cation, or section 7 request, the Office to withdraw soon after the practitioner
will send correspondence to the practi- notifies the client of his/her intent to
tioner. If the owner of the registration withdraw. The request must include
is not represented by a qualified practi- the following:
tioner, the Office will send correspond- (1) The application serial number,
ence directly to the owner, or to the registration number, or proceeding
domestic representative if appropriate, number;
in accordance with paragraph (a). (2) A statement of the reason(s) for
(2) Once the Office establishes a cor- the request to withdraw; and
respondence address upon examination (3) Either
of an affidavit, renewal application, or (i) A statement that the practitioner

section 7 request, a written request to has given notice to the client that the
268
practitioner is withdrawing from em- (5) The filing fee for at least one class
ployment and will be filing the nec- of goods or services, required by § 2.6.
essary documents with the Office; that (b) If the applicant does not submit
the client was given notice of the with- all the elements required in paragraph
drawal at least two months before the (a) of this section, the Office will deny
expiration of the response period, if ap- a filing date and issue a notice explain-
plicable; that the practitioner has de- ing why the filing date was denied.
livered to the client all documents and
property in the practitioner’s file con- FR 55762, Sept. 26, 2003; 73 FR 67767, Nov. 17,
cerning the application, registration or 2008]
proceeding to which the client is enti-
tled; and that the practitioner has no- § 2.22 Requirements for a TEAS Plus
tified the client of any responses that application.
may be due, and of the deadline for re- (a) A trademark/service mark appli-
sponse; or cation for registration on the Principal
(ii) If more than one qualified practi- Register under section 1 and/or section
tioner is of record, a statement that 44 of the Act will be entitled to a re-
representation by co-counsel is ongo- duced filing fee under § 2.6(a)(1)(iv) if it
ing. is filed through TEAS and includes:
[74 FR 54907, Oct. 26, 2009, as amended at 80 (1) The applicant’s name and address;
FR 2310, Jan. 16, 2015] (2) The applicant’s legal entity;
(3) The citizenship of an individual
DECLARATIONS applicant, or the state or country of in-
corporation or organization of a juris-
§ 2.20 Declarations in lieu of oaths.
tic applicant;
Instead of an oath, affidavit, or (4) If the applicant is a partnership,
sworn statement, the language of 28 the names and citizenship of the appli-
U.S.C. 1746, or the following declara- cant’s general partners;
tion language, may be used: (5) A name and address for cor-
The signatory being warned that willful false respondence;
statements and the like are punishable by (6) An e-mail address for correspond-
fine or imprisonment, or both, under 18 ence, and an authorization for the Of-
U.S.C. 1001, and that such willful false state- fice to send correspondence concerning
ments and the like may jeopardize the valid- the application to the applicant or ap-
ity of the application or submission or any plicant’s attorney by e-mail;
registration resulting therefrom, declares (7) One or more bases for filing that
that all statements made of his/her own
knowledge are true and all statements made
satisfy all the requirements of § 2.34. If
on information and belief are believed to be more than one basis is set forth, the
true. applicant must comply with the re-
quirements of § 2.34 for each asserted
[80 FR 33178, June 11, 2015]
basis;
APPLICATION FOR REGISTRATION (8) Correctly classified goods and/or
services, with an identification of
AUTHORITY: Secs. 2.21 to 2.47 also issued goods and/or services from the Office’s
under sec. 1, 60 Stat. 427; 15 U.S.C. 1051. Acceptable Identification of Goods and
Services Manual, available through the
§ 2.21 Requirements for receiving a fil- TEAS Plus form. In an application
ing date. based on section 44 of the Act, the
(a) The Office will grant a filing date scope of the goods and/or services cov-
to an application under section 1 or ered by the section 44 basis may not ex-
section 44 of the Act that is in the ceed the scope of the goods and/or serv-
English language and contains all of ices in the foreign application or reg-
the following: istration;
(1) The name of the applicant; (9) If the application contains goods
(2) A name and address for cor- and/or services in more than one class,
respondence; compliance with § 2.86;
(3) A clear drawing of the mark; (10) A filing fee for each class of
(4) A listing of the goods or services; goods and/or services, as required by

and § 2.6(a)(1)(iii);
269
§ 2.23 37 CFR Ch. I (7–1–16 Edition)
(11) A verified statement that meets (ii) Requests to change the cor-
the requirements of § 2.33, dated and respondence address and owner’s ad-
signed by a person properly authorized dress;
to sign on behalf of the owner pursuant (iii) Appointments and/or revocations
to § 2.193(e)(1); of power of attorney;
(12) A clear drawing of the mark. If (iv) Appointments and/or revocations
the applicant does not claim standard of domestic representative;
characters, the applicant must attach (v) Voluntary amendments;
a digitized image of the mark in .jpg (vi) Amendments to allege use under
format. If the mark includes color, the section 1(c) of the Act or statements of
drawing must show the mark in color; use under section 1(d) of the Act;
(13) If the mark is in standard char- (vii) Requests for extensions of time
acters, a mark comprised of only char- to file a statement of use under section
acters in the Office’s standard char- 1(d) of the Act; and
acter set, currently available at http:// (viii) Requests to delete a section 1(b)
www.uspto.gov, typed in the appro-
basis.
priate field of the TEAS Plus form;
(2) Maintain a valid email cor-
(14) If the mark includes color, a
respondence address and continue to
statement naming the color(s) and de-
receive communications from the Of-
scribing where the color(s) appears on
fice by email.
the mark, and a claim that the color(s)
is a feature of the mark; (c) If an application does not fulfill
the requirements of paragraphs (a) and
(15) If the mark is not in standard
(b) of this section, the applicant must
characters, a description of the mark;
pay the processing fee required by
(16) If the mark includes non-English § 2.6(a)(1)(v). The application will retain
wording, an English translation of that
its original filing date, provided that
wording;
when filed, the application met the fil-
(17) If the mark includes non-Latin ing date requirements of § 2.21.
characters, a transliteration of those
(d) The following types of applica-
characters;
tions cannot be filed as TEAS Plus ap-
(18) If the mark includes an individ- plications:
ual’s name or portrait, either (i) a
(1) Applications for certification
statement that identifies the living in-
marks (see § 2.45);
dividual whose name or likeness the
mark comprises and written consent of (2) Applications for collective trade-
the individual, or (ii) a statement that marks and service marks (see § 2.44);
the name or portrait does not identify (3) Applications for collective mem-
a living individual (see section 2(c) of bership marks (see § 2.44); and
the Act); (4) Applications for registration on
(19) If the applicant owns one or more the Supplemental Register (see § 2.47).
registrations for the same mark, and [70 FR 38773, July 6, 2005, as amended at 74
the owner(s) last listed in Office FR 54907, Oct. 26, 2009; 79 FR 74638, Dec. 16,
records of the prior registration(s) for 2014; 80 FR 2310, Jan. 16, 2015; 80 FR 33178,
the same mark differs from the June 11, 2015]
owner(s) listed in the application, a
claim of ownership of the registra- § 2.23 Requirements for a TEAS RF ap-
tion(s) identified by the registration plication.
number(s), pursuant to § 2.36; and (a) A trademark, service mark, cer-
(20) If the application is a concurrent tification mark, collective membership
use application, compliance with § 2.42. mark, or collective trademark applica-
(b) In addition to the filing require- tion for registration on the Principal
ments under paragraph (a) of this sec- or Supplemental Register under sec-
tion, the applicant must: tion 1 and/or section 44 of the Act will
(1) File the following communica- be entitled to a reduced filing fee under
tions through TEAS: § 2.6(a)(1)(iii) if it is filed through TEAS
(i) Responses to Office actions (ex- and includes:
cept notices of appeal under section 20 (1) An email address for correspond-
of the Trademark Act); ence; and
270
(2) An authorization for the Office to ity to bind the applicant (e.g., a cor-
send correspondence concerning the ap- porate officer or general partner of a
plication to the applicant or appli- partnership), or a practitioner quali-
cant’s attorney by email. fied to practice under § 11.14 of this
(b) In addition to the filing require- chapter.
ments under paragraph (a) of this sec- (2) If the applicant does not file a
tion, the applicant must: document designating the name and
(1) File the following communica- address of a person residing in the
tions through TEAS: United States on whom notices or proc-
(i) Responses to Office actions (ex- ess in proceedings affecting the mark
cept notices of appeal under section 20 may be served, or if the last person des-
of the Trademark Act); ignated cannot be found at the address
(ii) Requests to change the cor- given in the designation, then notices
respondence address and owner’s ad- or process in proceedings affecting the
dress; mark may be served on the Director.
(iii) Appointments and/or revocations (3) The mere designation of a domes-
of power of attorney; tic representative does not authorize
(iv) Appointments and/or revocations the person designated to represent the
of domestic representative; applicant unless qualified under § 11.14
(v) Voluntary amendments; of this chapter.
(vi) Amendments to allege use under
(b) A request to change or revoke a
section 1(c) of the Act or statements of
designation of domestic representative
use under section 1(d) of the Act;
must be signed by the applicant, some-
(vii) Requests for extensions of time
one with legal authority to bind the
to file a statement of use under section
applicant (e.g., a corporate officer or
1(d) of the Act; and
general partner of a partnership), or a
(viii) Requests to delete a section 1(b)
practitioner qualified to practice under
basis.
§ 11.14 of this chapter.
(2) Maintain a valid email cor-
respondence address, and continue to [74 FR 54907, Oct. 26, 2009]
receive communications from the Of-
fice by email. § 2.25 Documents not returnable.
(c) If an application does not meet Except as provided in § 2.27(e), docu-
the requirements of paragraphs (a) and ments filed in the Office by the appli-
(b) of this section, the applicant must cant or registrant become part of the
pay the processing fee required by official record and will not be returned
§ 2.6(a)(1)(v). The application will retain or removed.
its original filing date, provided that
when filed, the application met the fil- [73 FR 67768, Nov. 17, 2008]
ing date requirements of § 2.21.
§ 2.27 Pending trademark application
[79 FR 74639, Dec. 16, 2014] index; access to applications.
§ 2.24 Designation and revocation of (a) An index of pending applications
domestic representative by foreign including the name and address of the
applicant. applicant, a reproduction or descrip-
(a)(1) If an applicant is not domiciled tion of the mark, the goods or services
in the United States, the applicant with which the mark is used, the class
may designate a domestic representa- number, the dates of use, and the serial
tive (i.e., a person residing in the number and filing date of the applica-
United States on whom notices or proc- tion will be available for public inspec-
ess in proceedings affecting the mark tion as soon as practicable after filing.
may be served) by either: (b) Except as provided in paragraph
(i) Setting forth the name and ad- (e) of this section, access to the file of
dress of the domestic representative in a particular pending application will be
the initial application; or permitted prior to publication under
(ii) Filing a separate designation set- § 2.80 upon written request.
ting forth the name and address of the (c) Decisions of the Director and the
domestic representative, signed by the Trademark Trial and Appeal Board in

applicant, someone with legal author- applications and proceedings relating
271
§ 2.31 37 CFR Ch. I (7–1–16 Edition)
thereto are published or available for section 44 of the Act, the scope of the
inspection or publication. goods or services covered by the sec-
(d) Except as provided in paragraph tion 44 basis may not exceed the scope
(e) of this section, the official records of the goods or services in the foreign
of applications and all proceedings reapplication or registration;
lating thereto are available for public (7) The international class of goods
inspection and copies of the documents or services, if known. See § 6.1 of this
may be furnished upon payment of the chapter for a list of the international
fee required by § 2.6. classes of goods and services.
(e) Anything ordered to be filed under (8) If the mark is not in standard
seal pursuant to a protective order characters, a description of the mark;
issued or made by any court or by the (9) If the mark includes non-English
Trademark Trial and Appeal Board in wording, an English translation of that
any proceeding involving an applica- wording; and
tion or a registration shall be kept con- (10) If the mark includes non-Latin
fidential and shall not be made avail- characters, a transliteration of those
able for public inspection or copying characters, and either a translation of
unless otherwise ordered by the court the transliterated term in English, or a
or the Board, or unless the party pro- statement that the transliterated term
tected by the order voluntarily dis- has no meaning in English.
closes the matter subject thereto.
(b) The application must include a
When possible, only confidential por-
verified statement that meets the re-
tions of filings with the Board shall be
quirements of § 2.33.
filed under seal.
(c) The application must include a
[36 FR 25406, Dec. 31, 1971, as amended at 48 drawing that meets the requirements
FR 23134, May 23, 1983; 48 FR 27225, June 14, of § 2.51 and § 2.52.
1983; 73 FR 67768, Nov. 17, 2008]
(d) The application must include fee
THE WRITTEN APPLICATION required by § 2.6 for each class of goods
or services.
§ 2.31 [Reserved] (e) For the requirements of a mul-
tiple-class application, see § 2.86.
§ 2.32 Requirements for a complete (f) For the requirements of all collec-
trademark or service mark applica- tive mark applications, see § 2.44.
tion.
(g) For the requirements of a certifi-
(a) The application must be in cation mark application, see § 2.45.
English and include the following:
(1) A request for registration; [64 FR 48918, Sept. 8, 1999, as amended at 73
(2) The name of the applicant(s); FR 13784, Mar. 14, 2008; 73 FR 67768, Nov. 17,
2008; 80 FR 33178, June 11, 2015]
(3)(i) The citizenship of the appli-
cant(s); or § 2.33 Verified statement for a trade-
(ii) If the applicant is a corporation, mark or service mark.
association, partnership or other juris-
tic person, the jurisdiction (usually (a) The application must include a
state or nation) under the laws of verified statement.
which the applicant is organized; and (b)(1) In an application under section
(iii) If the applicant is a domestic 1(a) of the Act, the verified statement
partnership, the names and citizenship must allege:
of the general partners; or That the applicant believes the applicant is
(iv) If the applicant is a domestic the owner of the mark; that the mark is in
joint venture, the names and citizen- use in commerce; that to the best of the sig-
ship of the active members of the joint natory’s knowledge and belief, no other per-
venture; son has the right to use the mark in com-
(4) The address of the applicant; merce, either in the identical form or in such
(5) One or more bases, as required by near resemblance as to be likely, when ap-
plied to the goods or services of such other
§ 2.34(a); person, to cause confusion or mistake, or to
(6) A list of the particular goods or deceive; that the specimen shows the mark
services on or in connection with which
as used on or in connection with the goods or

the applicant uses or intends to use the services; and that the facts set forth in the
mark. In a U.S. application filed under application are true.
272
(2) In an application under section in paragraph (b)(1) of this section must

1(b) or 44 of the Act, the verified state- be modified to indicate that no other
ment must allege: person except as specified in the appli-
That the applicant has a bona fide intention
cation has the right to use the mark in
to use the mark in commerce; that the appli- commerce.
cant believes the applicant is entitled to use [80 FR 33178, June 11, 2015]
the mark in commerce on or in connection
with the goods or services specified in the § 2.34 Bases for filing a trademark or
application; that to the best of the sig- service mark application.
natory’s knowledge and belief, no other per-
son has the right to use the mark in com- (a) An application for a trademark or
merce, either in the identical form or in such service mark must include one or more
near resemblance as to be likely, when ap- of the following five filing bases:
plied to the goods or services of such other (1) Use in commerce under section 1(a)
person, to cause confusion or mistake, or to of the Act. The requirements for an ap-
deceive; and that the facts set forth in the plication under section 1(a) of the Act
application are true.
are:
(c) If the verified statement in para- (i) The applicant’s verified statement
graph (b)(1) or (2) of this section is not that the mark is in use in commerce. If
filed within a reasonable time after it the verified statement is not filed with
is signed, the Office may require the the initial application, the verified
applicant to submit a substitute statement must also allege that the
verified statement attesting that the mark was in use in commerce as of the
mark was in use in commerce as of the application filing date;
application filing date, or the applicant (ii) The date of the applicant’s first
had a bona fide intention to use the use of the mark anywhere on or in con-
mark in commerce as of the applica- nection with the goods or services;
tion filing date. (iii) The date of the applicant’s first
(d) [Reserved] use of the mark in commerce;
(e) In an application under section (iv) One specimen showing how the
66(a) of the Act, the verified statement, applicant uses the mark in commerce;
which is part of the international reg- and
istration on file with the International (v) If the application specifies more
Bureau, must allege that: than one item of goods or services in a
(1) The applicant/holder has a bona fide in- class, the dates of use in paragraphs
tention to use the mark in commerce that (a)(1)(ii) and (iii) of this section are re-
the U.S. Congress can regulate on or in con- quired for only one item of goods or
nection with the goods or services specified services specified in that class.
in the international application/subsequent (2) Intent-to-use under section 1(b) of
designation; the Act. In an application under section
(2) The signatory is properly authorized to 1(b) of the Act, the applicant must
execute the declaration on behalf of the ap-
verify that the applicant has a bona
plicant/holder;
(3) The signatory believes the applicant/ fide intention to use the mark in com-
holder to be entitled to use the mark in commerce. If the verified statement is not
merce that the U.S. Congress can regulate on filed with the initial application, the
or in connection with the goods or services verified statement must also allege
specified in the international application/ that the applicant had a bona fide in-
subsequent designation; and tention to use the mark in commerce
(4) To the best of his/her knowledge and be- as of the application filing date.
lief, no other person, firm, corporation, asso-
(3) Registration of a mark in a foreign
ciation, or other legal entity has the right to
use the mark in commerce that the U.S. applicant’s country of origin under sec-
Congress can regulate either in the identical tion 44(e) of the Act. The requirements
form thereof or in such near resemblance for an application under section 44(e) of
thereto as to be likely, when used on or in the Act are:
connection with the goods or services of such (i) The applicant’s verified statement
other person, firm, corporation, association, that the applicant has a bona fide in-
or other legal entity, to cause confusion, or tention to use the mark in commerce.
to cause mistake, or to deceive.
If the verified statement is not filed
(f) In an application for concurrent with the initial application, the Office
use under § 2.42, the verified statement will require submission of the verified
273
§ 2.35 37 CFR Ch. I (7–1–16 Edition)
statement, which must also allege that verified statement, which must also al-
the applicant had a bona fide intention lege that the applicant had a bona fide
to use the mark in commerce as of the intention to use the mark in commerce
application filing date. as of the application filing date.
(ii) A true copy, a photocopy, a cer- (iii) Before the application can be ap-
tification, or a certified copy of a reg- proved for publication, or for registra-
istration in the applicant’s country of tion on the Supplemental Register, the
origin showing that the mark has been applicant must establish a basis under
registered in that country, and that section 1 or 44 of the Act.
the registration is in full force and ef- (5) Extension of protection of an inter-
fect. The certification or copy of the national registration under section 66(a)
foreign registration must show the of the Act. In an application under sec-
name of the owner, the mark, and the tion 66(a) of the Act, the international
goods or services for which the mark is application/subsequent designation
registered. If the foreign registration is must contain a signed declaration that
not in the English language, the appli- meets the requirements of § 2.33(a), (e).
cant must submit a translation. (b) More than one basis. In an applica-
(iii) If the record indicates that the tion under section 1 or 44 of the Act, an
foreign registration will expire before applicant may claim more than one
the U.S. registration will issue, the ap- basis, provided the applicant satisfies
plicant must submit a true copy, a pho- all requirements for the bases claimed.
tocopy, a certification, or a certified In such case, the applicant must speci-
copy of a proof of renewal from the ap- fy each basis and the goods or services
plicant’s country of origin to establish to which that basis applies. An appli-
that the foreign registration has been cant must specify the goods or services
renewed and will be in full force and ef- covered by more than one basis. Sec-
fect at the time the U.S. registration tion 1(a) and 1(b) of the Act may not
will issue. If the proof of renewal is not both be claimed for identical goods or
in the English language, the applicant services in the same application. A
must submit a translation. basis under section 66(a) of the Act
(4) Claim of priority, based upon an ear- may not be combined with another
lier-filed foreign application, under sec- basis.
tion 44(d) of the Act. The requirements [64 FR 48919, Sept. 8, 1999, as amended at 67
for an application under section 44(d) of FR 79522, Dec. 30, 2002; 68 FR 55763, Sept. 26,
the Act are: 2003; 73 FR 67768, Nov. 17, 2008; 77 FR 30207,
(i) A claim of priority, filed within May 22, 2012; 80 FR 33179, June 11, 2015]
six months of the filing date of the for-
eign application. Before publication or § 2.35 Adding, deleting, or substituting
registration on the Supplemental Reg- bases.
ister, the applicant must either: (a) In an application under section
(A) Specify the filing date, serial 66(a) of the Act, an applicant may not
number and country of the first regu- add, substitute or delete a basis, unless
larly filed foreign application; or the applicant meets the requirements
(B) State that the application is for transformation under section 70(c)
based upon a subsequent regularly filed of the Act and § 7.31 of this chapter.
application in the same foreign coun- (b) In an application under section 1
try, and that any prior-filed applica- or section 44 of the Act:
tion has been withdrawn, abandoned, (1) Before publication for opposition,
or otherwise disposed of, without hav- an applicant may add or substitute a
ing been laid open to public inspection basis, if the applicant meets all re-
and without having any rights out- quirements for the new basis, as stated
standing, and has not served as a basis in § 2.34, § 2.44, or § 2.45. The applicant
for claiming a right of priority. may delete a basis at any time.
(ii) The applicant’s verified state- (2) After publication, an applicant
ment that the applicant has a bona fide may add or substitute a basis in an ap-
intention to use the mark in com- plication that is not the subject of an
merce. If the verified statement is not inter partes proceeding before the
filed with the initial application, the Trademark Trial and Appeal Board,
Office will require submission of the but only with the express permission of
274
the Director, after consideration on pe- fers from the owner(s) listed in the ap-
tition. Republication will be required. plication.
The amendment of an application that [80 FR 2310, Jan. 16, 2015]
is the subject of an inter partes pro-
ceeding before the Board is governed by § 2.37 Description of mark.
§ 2.133(a). A description of the mark must be in-
(3) When an applicant substitutes one cluded if the mark is not in standard
basis for another, the Office will pre- characters. In an application where the
sume that there was a continuing valid mark is in standard characters, a de-
basis, unless there is contradictory evi- scription may be included and must be
dence in the record, and the applica- included if required by the trademark
tion will retain the original filing date, examining attorney.
including a priority filing date under [73 FR 13784, Mar. 14, 2008]
section 44(d), if appropriate.
(4) If an applicant properly claims a § 2.38 Use by predecessor or by related
section 44(d) basis in addition to an- companies.
other basis, the applicant will retain (a) If the first use of the mark was by
the priority filing date under section a predecessor in title or by a related
44(d) no matter which basis the appli- company (sections 5 and 45 of the Act),
cant perfects. and the use inures to the benefit of the
(5) The applicant may add or sub- applicant, the dates of first use
stitute a section 44(d) basis only within (§§ 2.34(a)(1) (ii) and (iii)) may be as-
the six-month priority period following serted with a statement that first use
the filing date of the foreign applica- was by the predecessor in title or by
tion. the related company, as appropriate.
(b) The Office may require such de-
(6) When the applicant adds or sub-
tails concerning the nature of the rela-
stitutes a basis, the applicant must list
tionship and such proofs as may be nec-
each basis and specify the goods, serv- essary and appropriate for the purpose
ices, or collective membership organi- of showing that the use by related com-
zation to which that basis applies. panies inures to the benefit of the ap-
(7) When the applicant deletes a plicant and does not affect the validity
basis, the applicant must also delete of the mark.
any goods, services, or collective mem-
(Sec. 5, 60 Stat. 429; 15 U.S.C. 1055)
bership organization covered solely by
the deleted basis. [30 FR 13193, Oct. 16, 1965, as amended at 54
FR 37589, Sept. 11, 1989; 64 FR 48920, Sept. 8,
(8) Once an applicant claims a section
1999; 80 FR 2310, Jan. 16, 2015]
1(b) basis as to any or all of the goods
or services, or a collective membership § 2.39 [Reserved]
organization, the applicant may not
amend the application to seek registra- § 2.41 Proof of distinctiveness under
tion under section 1(a) of the Act for section 2(f).
identical goods or services or the same (a) For a trademark or service mark—(1)
collective membership organization, Ownership of prior registration(s). In ap-
unless the applicant files an allegation propriate cases, ownership of one or
of use under section 1(c) or section 1(d) more active prior registrations on the
of the Act. Principal Register or under the Trade-
mark Act of 1905 of the same mark may
[68 FR 55763, Sept. 26, 2003, as amended at 80 be accepted as prima facie evidence of
FR 33180, June 11, 2015] distinctiveness if the goods or services
are sufficiently similar to the goods or
§ 2.36 Identification of prior registra-
tions. services in the application; however,
further evidence may be required.
Prior registrations of the same or (2) Five years substantially exclusive
similar marks owned by the applicant and continuous use in commerce. In ap-
should be identified in the application propriate cases, if a trademark or serv-
if the owner(s) last listed in Office ice mark is said to have become dis-
records of the prior registrations dif- tinctive of the applicant’s goods or
275
§ 2.41 37 CFR Ch. I (7–1–16 Edition)
services by reason of the applicant’s tures in connection therewith (identi-

substantially exclusive and continuous fying types of media and attaching typ-
use of the mark in commerce for the ical advertisements), and verified
five years before the date on which the statements, letters or statements from
claim of distinctiveness is made, a the trade or public, or both, or other
showing by way of verified statements appropriate evidence of distinctiveness.
in the application may be accepted as (c) For a collective membership mark—
prima facie evidence of distinctiveness; (1) Ownership of prior registration(s). In
however, further evidence may be re- appropriate cases, ownership of one or
quired. more active prior registrations on the
(3) Other evidence. In appropriate Principal Register or under the Act of
cases, where the applicant claims that 1905 of the same mark may be accepted
a mark has become distinctive in com- as prima facie evidence of distinctive-
merce of the applicant’s goods or serv- ness if the goods, services, or nature of
ices, the applicant may, in support of the collective membership organiza-
registrability, submit with the application are sufficiently similar to the col-
tion, or in response to a request for evi- lective membership organization in the
dence or to a refusal to register, application; however, further evidence
verified statements, depositions, or may be required.
other appropriate evidence showing du- (2) Five years substantially exclusive
ration, extent, and nature of the use in and continuous use in commerce. In ap-
commerce and advertising expendi- propriate cases, if a collective member-
tures in connection therewith (identi-
ship mark is said to have become dis-
fying types of media and attaching typ-
tinctive of indicating membership in
ical advertisements), and verified
the applicant’s collective membership
statements, letters or statements from
organization by reason of the members’
the trade or public, or both, or other
substantially exclusive and continuous
appropriate evidence of distinctiveness.
use of the mark in commerce for the
(b) For a collective trademark or collec-
five years before the date on which the
tive service mark—(1) Ownership of prior
claim of distinctiveness is made, a
registration(s). See the requirements of
showing by way of verified statements
paragraph (a)(1) of this section.
in the application may be accepted as
(2) Five years substantially exclusive
and continuous use in commerce. In ap- prima facie evidence of distinctiveness;
propriate cases, if a collective trade- however, further evidence may be re-
mark or collective service mark is said quired.
to have become distinctive of the mem- (3) Other evidence. In appropriate
bers’ goods or services by reason of the cases, where the applicant claims that
members’ substantially exclusive and a mark has become distinctive in com-
continuous use of the mark in commerce of indicating membership in the
merce for the five years before the date applicant’s collective membership or-
on which the claim of distinctiveness is ganization, the applicant may, in sup-
made, a showing by way of verified port of registrability, submit with the
statements in the application may be application, or in response to a request
accepted as prima facie evidence of dis- for evidence or to a refusal to register,
tinctiveness; however, further evidence verified statements, depositions, or
may be required. other appropriate evidence showing du-
(3) Other evidence. In appropriate ration, extent, and nature of the mem-
cases, where the applicant claims that bers’ use in commerce, and advertising
a mark has become distinctive in com- expenditures in connection therewith
merce of the members’ goods or serv- (identifying types of media and attach-
ices, the applicant may, in support of ing typical advertisements), and
registrability, submit with the applica- verified statements, letters or state-
tion, or in response to a request for evi- ments from the trade or public, or
dence or to a refusal to register, both, or other appropriate evidence of
verified statements, depositions, or distinctiveness.
other appropriate evidence showing du- (d) For a certification mark—(1) Owner-
ration, extent, and nature of the use in ship of prior certification mark registra-
commerce, and advertising expendi- tion(s). In appropriate cases, ownership
276
of one or more active prior certifi- Principal Register under the Act must
cation mark registrations on the Prin- assert use in commerce and include all
cipal Register or under the Act of 1905 the application elements required by
of the same mark may be accepted as the preceding sections, in addition to
prima facie evidence of distinctiveness § 2.44 or § 2.45, if applicable.
if the authorized users’ goods or serv- (b) The applicant must also include a
ices are sufficiently similar to the verified statement that indicates the
goods or services certified in the appli- following, to the extent of the appli-
cation, subject to the limitations of cant’s knowledge:
the statement set forth in (1) For a trademark or service mark,
§ 2.45(a)(4)(i)(C); however, further evi- the geographic area in which the appli-
dence may be required. cant is using the mark in commerce;
(2) Five years substantially exclusive for a collective mark or certification
and continuous use in commerce. In ap- mark, the geographic area in which the
propriate cases, if a certification mark applicant’s members or authorized
is said to have become distinctive of users are using the mark in commerce;
the certified goods or services by rea-
(2) For a trademark or service mark,
son of the authorized users’ substan-
the applicant’s goods or services; for a
tially exclusive and continuous use of
collective trademark, collective serv-
the mark in commerce for the five
ice mark, or certification mark, the
years before the date on which the
applicant’s members’ or authorized
claim of distinctiveness is made, a
users’ goods or services; for a collective
showing by way of verified statements
membership mark, the nature of the
in the application may be accepted as
prima facie evidence of distinctiveness; applicant’s collective membership or-
however, further evidence may be re- ganization;
quired. (3) The mode of use for which the ap-
(3) Other evidence. In appropriate plicant seeks registration;
cases, where the applicant claims that (4) The concurrent users’ names and
a mark has become distinctive of the addresses;
certified goods or services program, the (5) The registrations issued to or ap-
applicant may, in support of plications filed by such concurrent
registrability, submit with the applica- users, if any;
tion, or in response to a request for evi- (6) For a trademark or service mark,
dence or to a refusal to register, the geographic areas in which the con-
verified statements, depositions, or current user is using the mark in com-
other appropriate evidence showing du- merce; for a collective mark or certifi-
ration, extent, and nature of the au- cation mark, the geographic areas in
thorized users’ use in commerce and which the concurrent user’s members
advertising expenditures in connection or authorized users are using the mark
therewith (identifying types of media in commerce;
and attaching typical advertisements), (7) For a trademark or service mark,
and verified statements, letters or the concurrent user’s goods or services;
statements from the trade or public, or for a collective trademark, collective
both, or other appropriate evidence of service mark, or certification mark,
distinctiveness. the concurrent user’s members’ or au-
(e) Certification marks with geo- thorized users’ goods or services; for a
graphical matter. Paragraph (d) of this collective membership mark, the na-
section does not apply to geographical ture of the concurrent user’s collective
matter in a certification mark certi- membership organization;
fying regional origin because section (8) The mode of use by the concurrent
2(e)(2) of the Act does not apply to cer- users or the concurrent users’ members
tification marks that are indications of or authorized users; and
regional origin. (9) The time periods of such use by
[80 FR 33180, June 11, 2015] the concurrent users or the concurrent
users’ members or authorized users.
§ 2.42 Concurrent use. (c) For the requirements to amend an
(a) Prior to seeking concurrent use, application to concurrent use, see

an application for registration on the § 2.73.
277
§ 2.43 37 CFR Ch. I (7–1–16 Edition)
(d) For the requirements of a concur- (4) One or more of the following five
rent use proceeding, see § 2.99. filing bases:
(i) Use in commerce under section 1(a)
[80 FR 33181, June 11, 2015]
of the Act. The requirements for an ap-
§ 2.43 Service mark. plication under section 1(a) of the Act
are:
In an application to register a service (A) A statement specifying the na-
mark, the application shall specify and ture of the applicant’s control over the
contain all the elements required by use of the mark by the members;
the preceding sections for trademarks, (B) For a collective trademark or col-
but shall be modified to relate to serv- lective service mark, the date of the
ices instead of to goods wherever nec- applicant’s member’s first use of the
essary. mark anywhere on or in connection
(Sec. 3, 60 Stat. 429; 15 U.S.C. 1052) with the goods or services and the date
of the applicant’s member’s first use of
§ 2.44 Requirements for a complete the mark in commerce; or for a collec-
collective mark application. tive membership mark, the date of the
applicant’s member’s first use any-
(a) A complete application to register
where to indicate membership in the
a collective trademark, collective serv-
collective organization and the date of
ice mark, or collective membership
the applicant’s member’s first use in
mark must include the following:
commerce. If the application specifies
(1) The requirements specified in more than one item of goods or serv-
§ 2.32(a) introductory text through ices in a class, the dates of use are re-
(a)(4), (a)(8) through (10), (c), and (d); quired for only one item of goods or
(2)(i) For a collective trademark or services specified in that class;
collective service mark, a list of the (C) One specimen showing how a
particular goods or services on or in member uses the mark in commerce;
connection with which the applicant’s and
members use or intend to use the (D) A verified statement alleging:
mark; or That the applicant believes the appli-
(ii) For a collective membership cant is the owner of the mark; that the
mark, a description of the nature of mark is in use in commerce; that the
the membership organization such as applicant is exercising legitimate con-
by type, purpose, or area of activity of trol over the use of the mark in com-
the members; and merce; that to the best of the sig-
(iii) In a U.S. application filed under natory’s knowledge and belief, no other
section 44 of the Act, the scope of the persons except members have the right
goods or services or the nature of the to use the mark in commerce, either in
membership organization covered by the identical form or in such near re-
the section 44 basis may not exceed the semblance as to be likely, when used
scope of the goods or services or nature on or in connection with the goods,
of the membership organization in the services, or collective membership or-
foreign application or registration. ganization of such other persons to
(3)(i) For a collective trademark or cause confusion or mistake, or to de-
collective service mark application, ceive; that the specimen shows the
the international class of goods or mark as used in commerce by the ap-
services, if known. See § 6.1 of this plicant’s members; and that the facts
chapter for a list of the international set forth in the application are true.
classes of goods and services; or (ii) Intent-to-use under section 1(b) of
(ii) For a collective membership the Act. The requirement for an appli-
mark application filed under sections 1 cation based on section 1(b) of the Act
or 44 of the Act, classification in U.S. is a verified statement alleging:
Class 200; and for a collective member- That the applicant has a bona fide in-
ship mark application filed under sec- tention, and is entitled, to exercise le-
tion 66(a) of the Act, the international gitimate control over the use of the
class(es) assigned by the International mark in commerce; that to the best of
Bureau in the corresponding inter- the signatory’s knowledge and belief,

national registration. no other persons, except members,
278
have the right to use the mark in com- (b) Verification not filed within reason-
merce, either in the identical form or able time or omitted. (1) If the verified
in such near resemblance as to be like- statement in paragraph (a)(4)(i)(D),
ly, when used on or in connection with (a)(4)(ii), (a)(4)(iii)(B), or (a)(4)(iv)(B) of
the goods, services, or collective mem- this section is not filed within a rea-
bership organization of such other per- sonable time after it is signed, the Of-
sons, to cause confusion or mistake, or fice may require the applicant to sub-
to deceive; and that the facts set forth mit a substitute verified statement at-
in the application are true. testing that, as of the application fil-
(iii) Registration of a mark in a foreign ing date, the mark was in use in com-
applicant’s country of origin under sec- merce and the applicant was exercising
tion 44(e) of the Act. The requirements legitimate control over the use of the
for an application under section 44(e) of mark in commerce; or, as of the appli-
the Act are: cation filing date, the applicant had a
(A) The requirements of § 2.34(a)(3)(ii) bona fide intention, and was entitled,
and (iii); and to exercise legitimate control over the
(B) A verified statement in accord- use of the mark in commerce; or
ance with paragraph (a)(4)(ii) of this (2) If the verified statement in para-
section. graph (a)(4)(i)(D), (a)(4)(ii),
(iv) Claim of priority, based upon an (a)(4)(iii)(B), (a)(4)(iv)(B), or (a)(4)(v) of
earlier-filed foreign application, under this section is not filed with the initial
section 44(d) of the Act. The require- application, the verified statement
ments for an application under section
must also allege that, as of the applica-
44(d) of the Act are:
tion filing date, the mark was in use in
(A) The requirements of § 2.34(a)(4)(i)
commerce and the applicant was exer-
and (iii); and
cising legitimate control over the use
(B) A verified statement in accord-
of the mark in commerce; or, as of the
ance with paragraph (a)(4)(ii) of this
application filing date, the applicant
section.
had a bona fide intention, and was enti-
(v) Extension of protection of an inter-
tled, to exercise legitimate control
national registration under section 66(a)
over the use of the mark in commerce.
of the Act. The requirement for an ap-
plication under section 66(a) of the Act (c) More than one basis. In an applica-
is a verified statement alleging that tion under section 1 or 44 of the Act, an
the applicant/holder has a bona fide in- applicant may claim more than one
tention, and is entitled, to exercise le- basis, provided the applicant satisfies
gitimate control over the use of the all requirements for the bases claimed.
mark in commerce that the U.S. Con- In such case, the applicant must speci-
gress can regulate on or in connection fy each basis, followed by the goods,
with the goods or services specified in services, or collective membership or-
the international application/subse- ganization to which that basis applies.
quent designation; that the signatory An applicant must specify the goods,
is properly authorized to execute the services, or collective membership or-
declaration on behalf of the applicant/ ganization covered by more than one
holder; and that to the best of his/her basis. Section 1(a) and 1(b) of the Act
knowledge and belief, no other person, may not both be claimed for identical
firm, corporation, association, or other goods, or services, or the same collec-
legal entity, except members, has the tive membership organization in one
right to use the mark in commerce application. A basis under section 66(a)
that the U.S. Congress can regulate ei- of the Act may not be combined with
ther in the identical form thereof or in another basis.
such near resemblance thereto as to be (d) In an application for concurrent use
likely, when used on or in connection under § 2.42, the verified statement in
with the goods, services, or collective paragraph (a)(4)(i)(D) of this section
membership organization of such other must be modified to indicate that no
person, firm, corporation, association, other persons except members and the
or other legal entity, to cause confu- concurrent users as specified in the ap-
sion, or to cause mistake, or to de- plication have the right to use the
ceive. mark in commerce.
279
§ 2.45 37 CFR Ch. I (7–1–16 Edition)
(e) Multiple-class applications. For the anywhere on or in connection with the

requirements of a multiple-class appli- goods or services and the date of the
cation, see § 2.86. applicant’s authorized user’s first use
[80 FR 33181, June 11, 2015]
of the mark in commerce. If the appli-
cation specifies more than one item of
§ 2.45 Requirements for a complete goods or services in a class, the dates
certification mark application; re- of use are required for only one item of
striction on certification mark ap- goods or services specified in that
plication. class;
(a) A complete application to register (E) One specimen showing how an au-
a certification mark must include the thorized user uses the mark in com-
following: merce; and
(1) The requirements specified in (F) A verified statement alleging:
§ 2.32(a) introductory text through That the applicant believes the appli-
(a)(4), (a)(8) through (10), (c), and (d); cant is the owner of the mark; that the
(2) A list of the particular goods or mark is in use in commerce; that the
services on or in connection with which applicant is exercising legitimate con-
the applicant’s authorized users use or trol over the use of the mark in com-
intend to use the mark. In an applica- merce; that to the best of the sig-
tion filed under section 44 of the Act, natory’s knowledge and belief, no other
the scope of the goods or services cov- persons except authorized users have
ered by the section 44 basis may not ex- the right to use the mark in commerce,
ceed the scope of the goods or services either in the identical form or in such
in the foreign application or registra- near resemblance as to be likely, when
tion; used on or in connection with the
(3) For applications filed under sec- goods or services of such other persons,
tion 1 or 44 of the Act, classification in to cause confusion or mistake, or to de-
U.S. Class A for an application certi- ceive; that the specimen shows the
fying goods and U.S. Class B for an ap- mark as used in commerce by the ap-
plication certifying services. For appli- plicant’s authorized users; and that the
cations filed under section 66(a) of the facts set forth in the application are
Act, the international class(es) of true.
goods or services assigned by the Inter- (ii) Intent-to-use under section 1(b) of
national Bureau in the corresponding the Act. The requirements for an appli-
international registration; cation based on section 1(b) of the Act
(4) One or more of the following five are:
filing bases: (A) A statement specifying what the
(i) Use in commerce under section 1(a) applicant will be certifying about the
of the Act. The requirements for an ap- goods or services in the application;
plication under section 1(a) of the Act (B) A statement that the applicant
are: will not engage in the production or
(A) A statement specifying what the marketing of the goods or services to
applicant is certifying about the goods which the mark is applied, except to
or services in the application; advertise or promote recognition of the
(B) A copy of the certification stand- certification program or of the goods
ards governing use of the certification or services that meet the certification
mark on or in connection with the standards of the applicant; and
goods or services specified in the appli- (C) A verified statement alleging:
cation; That the applicant has a bona fide in-
(C) A statement that the applicant is tention, and is entitled, to exercise le-
not engaged in the production or mar- gitimate control over the use of the
keting of the goods or services to mark in commerce; that to the best of
which the mark is applied, except to the signatory’s knowledge and belief,
advertise or promote recognition of the no other persons, except authorized
certification program or of the goods users, have the right to use the mark
or services that meet the certification in commerce, either in the identical
standards of the applicant; form or in such near resemblance as to
(D) The date of the applicant’s au- be likely, when used on or in connec-
thorized user’s first use of the mark tion with the goods or services of such
280
other persons, to cause confusion or tity, to cause confusion, or to cause

mistake, or to deceive; and that the mistake, or to deceive.
facts set forth in the application are (b) Verification not filed within reason-
true. able time or omitted. (1) If the verified
(iii) Registration of a mark in a foreign statement in paragraph (a)(4)(i)(F),
applicant’s country of origin under sec- (a)(4)(ii)(C), (a)(4)(iii)(C), or (a)(4)(iv)(C)
tion 44(e) of the Act. The requirements of this section is not filed within a rea-
for an application under section 44(e) of sonable time after it is signed, the Of-
the Act are: fice may require the applicant to sub-
(A) The requirements of § 2.34(a)(3)(ii) mit a substitute verified statement at-
and (iii); testing that, as of the application fil-
(B) The requirements in paragraphs ing date, the mark was in use in com-
(a)(4)(ii)(A) and (B) of this section; and merce and the applicant was exercising
(C) A verified statement in accord- legitimate control over the use of the
ance with paragraph (a)(4)(ii)(C) of this mark in commerce; or, as of the appli-
section. cation filing date, the applicant had a
(iv) Claim of priority, based upon an bona fide intention, and was entitled,
earlier-filed foreign application, under to exercise legitimate control over the
section 44(d) of the Act. The require- use of the mark in commerce; or
ments for an application under section (2) If the verified statement in para-
44(d) of the Act are: graph (a)(4)(i)(F), (a)(4)(ii)(C),
(A) The requirements of § 2.34(a)(4)(i) (a)(4)(iii)(C), (a)(4)(iv)(C), or (a)(4)(v)(B)
and (iii); of this section is not filed with the ini-
(B) The requirements in paragraphs tial application, the verified statement
(a)(4)(ii)(A) and (B) of this section; and must also allege that, as of the applica-
(C) A verified statement in accord- tion filing date, the mark was in use in
ance with paragraph (a)(4)(ii)(C) of this commerce and the applicant was exer-
section. cising legitimate control over the use
(v) Extension of protection of an inter- of the mark in commerce; or, as of the
national registration under section 66(a) application filing date, the applicant
of the Act. The requirements for an ap- had a bona fide intention, and was enti-
plication under section 66(a) of the Act tled, to exercise legitimate control
are: over the use of the mark in commerce.
(A) The requirements of paragraphs (c) More than one basis. In an applica-
(a)(4)(ii)(A) and (B) of this section; and tion under section 1 or 44 of the Act, an
(B) A verified statement alleging applicant may claim more than one
that the applicant/holder has a bona basis, provided the applicant satisfies
fide intention, and is entitled, to exer- all requirements for the bases claimed.
cise legitimate control over the use of In such case, the applicant must speci-
the mark in commerce that the U.S. fy each basis, followed by the goods or
Congress can regulate on or in connec- services to which that basis applies. An
tion with the goods or services speci- applicant must specify the goods or
fied in the international application/ services covered by more than one
subsequent designation; that the signa- basis. Section 1(a) and 1(b) of the Act
tory is properly authorized to execute may not both be claimed for identical
the declaration on behalf of the appli- goods or services in the same applica-
cant/holder; and that to the best of his/ tion. A basis under section 66(a) of the
her knowledge and belief, no other per- Act may not be combined with another
son, firm, corporation, association, or basis.
other legal entity, except authorized (d) Concurrent use. In an application
users, has the right to use the mark in for concurrent use under § 2.42, the
commerce that the U.S. Congress can verified statement in paragraph
regulate either in the identical form (a)(4)(i)(F) of this section must be
thereof or in such near resemblance modified to indicate that no other per-
thereto as to be likely, when used on or sons except authorized users and con-
in connection with the goods or serv- current users as specified in the appli-
ices of such other person, firm, cor- cation have the right to use the mark
poration, association, or other legal en- in commerce.
281
§ 2.46 37 CFR Ch. I (7–1–16 Edition)
(e) Multiple-class applications. For the § 2.48 Office does not issue duplicate
requirements of a multiple-class appli- registrations.
cation, see § 2.86. If two applications on the same reg-
(f) Restriction on certification mark ap- ister would result in registrations that
plication. A single application may not are exact duplicates, the Office will
include a certification mark and an- permit only one application to mature
other type of mark. The same mark for into registration, and will refuse reg-
the same goods or services is not registration in the other application.
istrable as both a certification mark
[73 FR 67769, Nov. 17, 2008]
and another type of mark. See sections
4 and 14(5)(B) of the Act. DRAWING
[80 FR 33182, June 11, 2015]
§ 2.46 Principal Register. under sec. 1, 60 Stat. 427; 15 U.S.C. 1051.
All applications will be treated as § 2.51 Drawing required.
seeking registration on the Principal
Register unless otherwise stated in the (a) In an application under section
application. Service marks, collective 1(a) of the Act, the drawing of the
marks, and certification marks, reg- mark must be a substantially exact
representation of the mark as used on
istrable in accordance with the appli-
or in connection with the goods and/or
cable provisions of section 2 of the Act,
services.
are registered on the Principal Reg-
(b) In an application under section
ister.
1(b) of the Act, the drawing of the
§ 2.47 Supplemental Register. mark must be a substantially exact
representation of the mark as intended
(a) In an application to register on to be used on or in connection with the
the Supplemental Register under sec- goods and/or services specified in the
tion 23 of the Act, the application shall application, and once an amendment to
so indicate and shall specify that the allege use under § 2.76 or a statement of
mark has been in use in commerce. use under § 2.88 has been filed, the
(b) In an application to register on drawing of the mark must be a sub-
the Supplemental Register under sec- stantially exact representation of the
tion 44 of the Act, the application shall mark as used on or in connection with
so indicate. The statement of lawful the goods and/or services.
use in commerce may be omitted. (c) In an application under section 44
(c) An application under section 66(a) of the Act, the drawing of the mark
of the Act is not eligible for registra- must be a substantially exact represen-
tion on the Supplemental Register. tation of the mark as it appears in the
(d) A mark in an application to reg- drawing in the registration certificate
of a mark duly registered in the appli-
ister on the Principal Register under
cant’s country of origin.
section 1(b) of the Act is eligible for
(d) In an application under section
registration on the Supplemental Reg-
66(a) of the Act, the drawing of the
ister only after an acceptable amend-
mark must be a substantially exact
ment to allege use under § 2.76 or state- representation of the mark as it ap-
ment of use under § 2.88 has been timely pears in the international registration.
filed.
(e) An application for registration on [68 FR 55763, Sept. 26, 2003]
the Supplemental Register must con-
§ 2.52 Types of drawings and format
form to the requirements for registra- for drawings.
tion on the Principal Register under
section 1(a) of the Act, so far as appli- A drawing depicts the mark sought
cable. to be registered. The drawing must
show only one mark. The applicant
[54 FR 37590, Sept. 11, 1989, as amended at 68 must include a clear drawing of the
FR 55763, Sept. 26, 2003; 73 FR 67769, Nov. 17, mark when the application is filed.
2008] There are two types of drawings:
282
(a) Standard character (typed) drawing. ment of the mark by surrounding the
Applicants who seek to register words, mark with a proportionately accurate
letters, numbers, or any combination broken-line representation of the par-
thereof without claim to any particular goods, packaging, or adver-
ticular font style, size, or color must tising on which the mark appears. The
submit a standard character drawing applicant must also use broken lines to
that shows the mark in black on a show any other matter not claimed as
white background. An applicant may part of the mark. For any drawing
submit a standard character drawing using broken lines to indicate place-
if: ment of the mark, or matter not
(1) The application includes a state- claimed as part of the mark, the appli-
ment that the mark is in standard cant must describe the mark and ex-
characters and no claim is made to any plain the purpose of the broken lines.
particular font style, size, or color; (5) Description of mark. A description
(2) The mark does not include a de- of the mark must be included.
sign element;
(c) TEAS drawings. A drawing filed
(3) All letters and words in the mark
through TEAS must meet the require-
are depicted in Latin characters;
ments of § 2.53.
(4) All numerals in the mark are de-
picted in Roman or Arabic numerals; (d) Paper drawings. A paper drawing
and must meet the requirements of § 2.54.
(5) The mark includes only common (e) Sound, scent, and non-visual marks.
punctuation or diacritical marks. An applicant is not required to submit
(b) Special form drawing. Applicants a drawing if the mark consists only of
who seek to register a mark that in- a sound, a scent, or other completely
cludes a two or three-dimensional de- non-visual matter. For these types of
sign; color; and/or words, letters, or marks, the applicant must submit a de-
numbers or the combination thereof in tailed description of the mark.
a particular font style or size must [68 FR 55763, Sept. 26, 2003, as amended at 73
submit a special form drawing. The FR 13784, Mar. 14, 2008; 73 FR 67769, Nov. 17,
drawing should show the mark in black 2008]
on a white background, unless the
mark includes color. § 2.53 Requirements for drawings filed
(1) Marks that include color. If the through the TEAS.
mark includes color, the drawing must The drawing must meet the require-
show the mark in color, and the appli- ments of § 2.52. In addition, in a TEAS
cant must name the color(s), describe submission, the drawing must meet the
where the color(s) appear on the mark,
following requirements:
and submit a claim that the color(s) is
(a) Standard character drawings. If an
a feature of the mark.
(2) Three dimensional marks. If the applicant seeks registration of a stand-
mark has three-dimensional features, ard character mark, the applicant
the drawing must depict a single ren- must enter the mark in the appropriate
dition of the mark, and the applicant field on the TEAS form, and check the
must indicate that the mark is three- box to claim that the mark consists of
dimensional. standard characters.
(3) Motion marks. If the mark has mo- (b) Special form drawings: If an appli-
tion, the drawing may depict a single cant is filing a special form drawing,
point in the movement, or the drawing the applicant must attach a digitized
may depict up to five freeze frames image of the mark to the TEAS sub-
showing various points in the move- mission that meets the requirements of
ment, whichever best depicts the com- paragraph (c) of this section.
mercial impression of the mark. The (c) Requirements for digitized image:
applicant must also describe the mark. The image must be in .jpg format and
(4) Broken lines to show placement. If scanned at no less than 300 dots per
necessary to adequately depict the inch and no more than 350 dots per inch
commercial impression of the mark, with a length and width of no less than
the applicant may be required to sub- 250 pixels and no more than 944 pixels.
mit a drawing that shows the place- All lines must be clean, sharp and
283
§ 2.54 37 CFR Ch. I (7–1–16 Edition)
solid, not fine or crowded, and produce (2) A service mark specimen must
a high quality image when copied. show the mark as used in the sale or
advertising of the services.
FR 38774, July 6, 2005; 73 FR 67769, Nov. 17, (3) A collective trademark or collec-
2008] tive service mark specimen must show
how a member uses the mark on the
§ 2.54 Requirements for drawings sub- member’s goods or in the sale or adver-
mitted on paper. tising of the member’s services.
The drawing must meet the require- (4) A collective membership mark
ments of § 2.52. In addition, in a paper specimen must show use by members
submission, the drawing should: to indicate membership in the collec-
(a) Be on non-shiny white paper that tive organization.
is separate from the application; (5) A certification mark specimen
(b) Be on paper that is 8 to 8.5 inches must show how a person other than the
(20.3 to 21.6 cm.) wide and 11 to 11.69 owner uses the mark to reflect certifi-
inches (27.9 to 29.7 cm.) long. One of the cation of regional or other origin, ma-
shorter sides of the sheet should be re- terial, mode of manufacture, quality,
garded as its top edge. The image must accuracy, or other characteristics of
be no larger than 3.15 inches (8 cm) that person’s goods or services; or that
high by 3.15 inches (8 cm) wide; members of a union or other organiza-
(c) Include the caption ‘‘DRAWING tion performed the work or labor on
PAGE’’ at the top of the drawing be- the goods or services.
ginning one inch (2.5 cm.) from the top (c) A photocopy or other reproduc-
edge; and tion of a specimen of the mark as used
(d) Depict the mark in black ink, or on or in connection with the goods, or
in color if color is claimed as a feature in the sale or advertising of the serv-
of the mark. ices, is acceptable. However, a photo-
(e) Drawings must be typed or made copy of the drawing required by § 2.51 is
with a pen or by a process that will not a proper specimen.
provide high definition when copied. A (d)(1) The specimen should be flat,
photolithographic, printer’s proof copy,
and not larger than 81⁄2 inches (21.6 cm.)
or other high quality reproduction of
wide by 11.69 inches (29.7 cm.) long. If a
the mark may be used. All lines must
be clean, sharp and solid, and must not specimen of this size is not available,
be fine or crowded. the applicant may substitute a suitable
photograph or other facsimile.
[68 FR 55764, Sept. 26, 2003] (2) If the applicant files a specimen
exceeding these size requirements (a
§ 2.56 Specimens. ‘‘bulky specimen’’), the Office will cre-
(a) An application under section 1(a) ate a digital facsimile of the specimen
of the Act, an amendment to allege use that meets the requirements of the
under § 2.76, and a statement of use rule (i.e., is flat and no larger than 81⁄2
under § 2.88 must each include one spec- inches (21.6 cm.) wide by 11.69 inches
imen per class showing the mark as (29.7 cm.) long) and put it in the record.
used on or in connection with the The Office may destroy the original
goods or services. When requested by bulky specimen.
the Office as reasonably necessary to (3) In the absence of non-bulky alter-
proper examination, additional speci- natives, a specimen of use in another
mens must be provided.
appropriate medium may be designated
(b)(1) A trademark specimen is a as acceptable by the Office.
label, tag, or container for the goods,
(4) For a TEAS submission, the speci-
or a display associated with the goods.
The Office may accept another documen must be a digitized image in .jpg
ment related to the goods or the sale of or .pdf format.
the goods when it is impracticable to [64 FR 48921, Sept. 8, 1999, as amended at 68
place the mark on the goods, pack-
FR 55764, Sept. 26, 2003; 73 FR 67769, Nov. 17,

aging for the goods, or displays associ- 2008; 77 FR 30207, May 22, 2012; 80 FR 33183,
ated with the goods. June 11, 2015]
284
§§ 2.57–2.58 [Reserved] therefor and of any formal require-

ments or objections.
§ 2.59 Filing substitute specimen(s). (b) The Office may require the appli-
(a) In an application under section cant to furnish such information, ex-
1(a) of the Act, the applicant may sub- hibits, affidavits or declarations, and
mit substitute specimens of the mark such additional specimens as may be
as used on or in connection with the reasonably necessary to the proper ex-
goods or in the sale or advertising of amination of the application.
the services, or as used to indicate (c) Whenever it shall be found that
membership in the collective organiza- two or more parties whose interests are
tion. The applicant must submit a in conflict are represented by the same
verified statement that the substitute attorney, each party and also the at-
specimen was in use in commerce at torney shall be notified of this fact.
least as early as the filing date of the
application. The verified statement is FR 2880, Feb. 9, 1972; 54 FR 37592, Sept. 11,
not required if the specimen is a dupli- 1989; 77 FR 30207, May 22, 2012]
cate or facsimile of a specimen already
of record in the application. § 2.62 Procedure for filing response.
(b) In an application under section
(a) Deadline. The applicant’s response
1(b) of the Act, after filing either an
to an Office action must be received
amendment to allege use under § 2.76 or
within six months from the date of
a statement of use under § 2.88, the ap-
issuance.
plicant may submit substitute speci-
mens of the mark as used on or in con- (b) Signature. The response must be
nection with the goods or in the sale or signed by the applicant, someone with
advertising of the services, or as used legal authority to bind the applicant
to indicate membership in the collec- (e.g., a corporate officer or general
tive organization. If the applicant sub- partner of a partnership), or a practi-
mits substitute specimen(s), the appli- tioner qualified to practice under § 11.14
cant must: of this chapter, in accordance with the
(1) For an amendment to allege use requirements of § 2.193(e)(2).
under § 2.76, submit a verified state- (c) Form. Responses must be filed
ment that the substitute specimen(s) through TEAS, transmitted by fac-
was in use in commerce prior to filing simile, mailed, or delivered by hand, as
the amendment to allege use. set out in § 2.190(a). Responses sent via
(2) For a statement of use under email will not be accorded a date of re-
§ 2.88, submit a verified statement that ceipt.
the substitute specimen(s) was in use [73 FR 67769, Nov. 17, 2008, as amended at 74
in commerce either prior to filing the FR 54908, Oct. 26, 2009; 80 FR 2310, Jan. 16,
statement of use or prior to the expira- 2015]
tion of the deadline for filing the state-
ment of use. § 2.63 Action after response.
[80 FR 33183, June 11, 2015] (a) Repeated non-final refusal or re-
quirement. After response by the appli-
EXAMINATION OF APPLICATION AND cant, the examining attorney will re-
ACTION BY APPLICANTS view all statutory refusals and/or re-
quirement(s) in light of the response.
AUTHORITY: Secs. 2.61 to 2.69 also issued (1) If, after review of the applicant’s
under sec. 12, 60 Stat. 432; 15 U.S.C. 1062. response, the examining attorney
issues a non-final action that main-
§ 2.61 Action by examiner. tains any previously issued substantive
(a) Applications for registration, in- refusal(s) to register or repeats any re-
cluding amendments to allege use quirement(s), the applicant may sub-
under section 1(c) of the Act, and state- mit a timely response to the action
ments of use under section 1(d) of the under § 2.62(a).
Act, will be examined and, if the appli- (2) If, after review of the applicant’s
cant is found not entitled to registra- response, the examining attorney
tion for any reason, applicant will be issues a non-final action that contains
notified and advised of the reasons no substantive refusals to register, but
285
§ 2.64 37 CFR Ch. I (7–1–16 Edition)
maintains any requirement(s), the ap- (4) Filing a request for reconsider-
plicant may respond to such repeated ation that does not result in the with-
requirement(s) by filing a timely peti- drawal of all refusals and require-
tion to the Director for relief from the ments, without the filing of a timely
repeated requirement(s) if the subject appeal or petition, will result in aban-
matter of the repeated requirement(s) donment of the application for incom-
is appropriate for petition to the Direc- plete response, pursuant to § 2.65(a).
tor (see § 2.146(b)). (c) If a petition to the Director under
(b) Final refusal or requirement. Upon § 2.146 is denied, the applicant will have
review of a response, the examining at- six months from the date of issuance of
torney may state that the refusal(s) to the Office action that repeated the re-
register, or the requirement(s), is final. quirement(s), or made it final, or thir-
(1) If the examining attorney issues a ty days from the date of the decision
final action that maintains any sub- on the petition, whichever date is
stantive refusal(s) to register, the ap- later, to comply with the require-
plicant may respond by timely filing: ment(s). A requirement that is the sub-
(i) A request for reconsideration ject of a petition decided by the Direc-
under paragraph (b)(3) of this section tor subsequently may not be the sub-
that seeks to overcome any subject of an appeal to the Trademark
stantive refusal(s) to register, and com- Trial and Appeal Board.
ply with any outstanding require- (d) If an applicant in an application
ment(s), maintained in the final ac- under section 1(b) of the Act files an
tion; or amendment to allege use under § 2.76
(ii) An appeal to the Trademark Trial during the six-month response period
and Appeal Board under §§ 2.141 and after issuance of a final action, the ex-
2.142. amining attorney will examine the
(2) If the examining attorney issues a amendment. The filing of such an
final action that contains no sub- amendment does not stay or extend the
stantive refusals to register, but main- time for filing an appeal or petition.
tains any requirement(s), the applicant [80 FR 2310, Jan. 16, 2015]
may respond by timely filing:
(i) A request for reconsideration § 2.64 [Reserved]
under paragraph (b)(3) of this section
that seeks to comply with any out- § 2.65 Abandonment.
standing requirement(s) maintained in (a) An application will be abandoned
the final action; if an applicant fails to respond to an
(ii) An appeal of the requirement(s) Office action, or to respond completely,
to the Trademark Trial and Appeal within six months from the date of
Board under §§ 2.141 and 2.142; or issuance. A timely petition to the Di-
(iii) A petition to the Director under rector pursuant to §§ 2.63(a) and (b) and
§ 2.146 to review the requirement(s), if 2.146 or notice of appeal to the Trade-
the subject matter of the require- mark Trial and Appeal Board pursuant
ment(s) is procedural, and therefore ap- to § 2.142, if appropriate, is a response
propriate for petition. that avoids abandonment (see
(3) Prior to the expiration of the time § 2.63(b)(4)).
for filing an appeal or a petition, the (1) If all refusals and/or requirements
applicant may file a request for recon- are expressly limited to certain goods
sideration of the final action that and/or services, the application will be
seeks to overcome any substantive re- abandoned only as to those goods and/
fusal(s) and/or comply with any out- or services.
standing requirement(s). Filing a re- (2) When a timely response by the ap-
quest for reconsideration does not stay plicant is a bona fide attempt to ad-
or extend the time for filing an appeal vance the examination of the applica-
or petition. The Office will enter tion and is a substantially complete re-
amendments accompanying requests sponse to the examining attorney’s ac-
for reconsideration after final action if tion, but consideration of some matter
the amendments comply with the rules or compliance with a requirement has
of practice in trademark cases and the been omitted, the examining attorney
Act. may grant the applicant thirty days, or
286
to the end of the response period set that the delay in filing the statement
forth in the action to which the sub- of use (or request for extension of time
stantially complete response was sub- to file a statement of use) on or before
mitted, whichever is longer, to explain the due date was unintentional;
and supply the omission before the ex- (3) Unless the applicant alleges that
amining attorney considers the ques- it did not receive the notice of allow-
tion of abandonment. ance and requests cancellation of the
(b) An application will be abandoned notice of allowance, the required fees
if an applicant expressly abandons the for the number of requests for exten-
application pursuant to § 2.68. sions of time to file a statement of use
(c) An application will be abandoned that the applicant should have filed
if an applicant in an application under under § 2.89 if the application had never
section 1(b) of the Act fails to timely been abandoned;
file either a statement of use under (4) Unless the applicant alleges that
§ 2.88 or a request for an extension of it did not receive the notice of allow-
time for filing a statement of use under ance and requests cancellation of the
§ 2.89. notice of allowance, either a statement
[80 FR 2311, Jan. 16, 2015] of use under § 2.88 or a request for an
extension of time to file a statement of
§ 2.66 Revival of abandoned applica- use under § 2.89; and
tions. (5) Unless a statement of use is filed
(a) The applicant may file a petition with or before the petition, or the ap-
to revive an application abandoned be- plicant alleges that it did not receive
cause the applicant did not timely re- the notice of allowance and requests
spond to an Office action or notice of cancellation of the notice of allowance,
allowance, if the delay was uninten- the applicant must file any further re-
tional. The applicant must file the pe- quests for extensions of time to file a
tition: statement of use under § 2.89 that be-
(1) Within two months of the date of come due while the petition is pending,
issuance of the notice of abandonment; or file a statement of use under § 2.88.
or (d) In an application under section
(2) Within two months of actual 1(b) of the Act, the Director will not
knowledge of the abandonment, if the grant the petition if this would permit
applicant did not receive the notice of the filing of a statement of use more
abandonment, and the applicant was than 36 months after the date of
diligent in checking the status of the issuance of the notice of allowance
application every six months in accord- under section 13(b)(2) of the Act.
ance with § 2.146(i). (e) The Director will grant the peti-
(b) The requirements for filing a petition to revive if the applicant complies
tion to revive an application aban- with the requirements listed above and
doned because the applicant did not establishes that the delay in respond-
timely respond to an Office action are: ing was unintentional.
(1) The petition fee required by § 2.6; (f) If the Director denies a petition,
(2) A statement, signed by someone the applicant may request reconsider-
with firsthand knowledge of the facts, ation, if the applicant:
that the delay in filing the response on (1) Files the request within two
or before the due date was uninten- months of the date of issuance of the
tional; and decision denying the petition; and
(3) Unless the applicant alleges that (2) Pays a second petition fee under
it did not receive the Office action, the § 2.6.
proposed response. [64 FR 48921, Sept. 8, 1999, as amended at 68
(c) The requirements for filing a peti- FR 55764, Sept. 26, 2003; 73 FR 67769, Nov. 17,
tion to revive an application aban- 2008]
doned because the applicant did not
timely respond to a notice of allowance § 2.67 Suspension of action by the Pat-
are: ent and Trademark Office.
(1) The petition fee required by § 2.6; Action by the Patent and Trademark
(2) A statement, signed by someone Office may be suspended for a reason-

with firsthand knowledge of the facts, able time for good and sufficient cause.
287
§ 2.68 37 CFR Ch. I (7–1–16 Edition)
The fact that a proceeding is pending AMENDMENT OF APPLICATION

before the Patent and Trademark Of-
fice or a court which is relevant to the § 2.71 Amendments to correct infor-
issue of registrability of the applicant’s malities.
mark, or the fact that the basis for reg- The applicant may amend the appli-
istration is, under the provisions of cation during the course of examina-
section 44(e) of the Act, registration of tion, when required by the Office or for
the mark in a foreign country and the other reasons.
foreign application is still pending, will (a) The applicant may amend the ap-
be considered prima facie good and suf- plication to clarify or limit, but not to
ficient cause. An applicant’s request broaden, the identification of goods
for a suspension of action under this
and/or services or the description of the
section filed within the 6–month re-
nature of the collective membership
sponse period (see § 2.62) may be consid-
organization.
ered responsive to the previous Office
action. The first suspension is within (b)(1) If the verified statement in an
the discretion of the Examiner of application under § 2.33 is unsigned or
Trademarks and any subsequent sus- signed by the wrong party, the appli-
pension must be approved by the Direc- cant may submit a substitute
tor. verification.
(2) If the verified statement in a
[37 FR 3898, Feb. 24, 1972] statement of use under § 2.88, or a re-
§ 2.68 Express abandonment (with- quest for extension of time to file a
drawal) of application. statement of use under § 2.89, is un-
signed or signed by the wrong party,
(a) Written document required. An ap- the applicant must submit a substitute
plicant may expressly abandon an ap- verification before the expiration of
plication by filing a written request for the statutory deadline for filing the
abandonment or withdrawal of the ap- statement of use.
plication, signed by the applicant,
(c) The applicant may amend the
someone with legal authority to bind
dates of use, provided that the amend-
the applicant (e.g., a corporate officer
ment is verified, except that the fol-
or general partner of a partnership), or
lowing amendments are not permitted:
a practitioner qualified to practice
under § 11.14 of this chapter, in accord- (1) In an application under section
ance with the requirements of 1(a) of the Act, the applicant may not
§ 2.193(e)(2). A request for abandonment amend the application to specify a date
or withdrawal may not subsequently be of use that is subsequent to the filing
withdrawn. date of the application;
(b) Rights in the mark not affected. Ex- (2) In an application under section
cept as provided in § 2.135, the fact that 1(b) of the Act, after filing a statement
an application has been expressly aban- of use under § 2.88, the applicant may
doned shall not affect any rights that not amend the statement of use to
the applicant may have in the mark set specify a date of use that is subsequent
forth in the abandoned application in to the expiration of the deadline for fil-
any proceeding before the Office. ing the statement of use.
(d) The applicant may amend the ap-
[80 FR 2311, Jan. 16, 2015]
plication to correct the name of the ap-
§ 2.69 Compliance with other laws. plicant, if there is a mistake in the
manner in which the name of the appli-
When the sale or transportation of cant is set out in the application. The
any product for which registration of a amendment must be verified. However,
trademark is sought is regulated under the application cannot be amended to
an Act of Congress, the Patent and set forth a different entity as the appli-
Trademark Office may make appro- cant. An application filed in the name
priate inquiry as to compliance with of an entity that did not own the mark
such Act for the sole purpose of deter- as of the filing date of the application
mining lawfulness of the commerce re- is void.
cited in the application. (e) An amendment that would mate-

[54 FR 37592, Sept. 11, 1989] rially alter the certification statement
288
specified in § 2.45(a)(4)(i)(A) or mark filed with the original applica-

(a)(4)(ii)(A) will not be permitted. tion.
[64 FR 48922, Sept. 8, 1999, as amended at 80 [64 FR 48922, Sept. 8, 1999]
FR 33184, June 11, 2015]
§ 2.73 Amendment to recite concurrent
§ 2.72 Amendments to description or use.
drawing of the mark.
An application that includes section
(a) In an application based on use in 1(a) of the Trademark Act as a filing
commerce under section 1(a) of the basis, or for which an acceptable alle-
Act, the applicant may amend the de- gation of use under § 2.76 or § 2.88 has
scription or drawing of the mark only been filed, may be amended to an appli-
if: cation for concurrent use registration,
(1) The specimens originally filed, or provided that the application as
substitute specimens filed under amended meets the requirements of
§ 2.59(a), support the proposed amend- § 2.42. The trademark examining attor-
ment; and ney will determine whether the appli-
(2) The proposed amendment does not cation, as amended, is acceptable.
materially alter the mark. The Office
[73 FR 67770, Nov. 17, 2008]
will determine whether a proposed
amendment materially alters a mark § 2.74 Form and signature of amend-
by comparing the proposed amendment ment.
with the description or drawing of the
mark filed with the original applica- (a) Form of Amendment. Amendments
tion. should be set forth clearly and com-
(b) In an application based on a bona pletely. Applicant should either set
fide intention to use a mark in com- forth the entire wording, including the
merce under section 1(b) of the Act, the proposed changes, or, if it would be
applicant may amend the description more efficient, indicate which words
or drawing of the mark only if: should be added and which words
(1) The specimens filed with an should be deleted. The examining at-
amendment to allege use or statement torney may require the applicant to re-
of use, or substitute specimens filed write the entire amendment, if nec-
under § 2.59(b), support the proposed essary for clarification of the record.
amendment; and (b) Signature. A request for amend-
(2) The proposed amendment does not ment of an application must be signed
materially alter the mark. The Office by the applicant, someone with legal
will determine whether a proposed authority to bind the applicant (e.g., a
amendment materially alters a mark corporate officer or general partner of
by comparing the proposed amendment a partnership), or a practitioner quali-
with the description or drawing of the fied to practice under § 11.14 of this
mark filed with the original applica- chapter, in accordance with the re-
tion. quirements of § 2.193(e)(2). If the
(c) In an application based on a claim amendment requires verification, see
of priority under section 44(d) of the § 2.2(n).
Act, or on a mark duly registered in [73 FR 67770, Nov. 17, 2008, as amended at 74
the country of origin of the foreign ap- FR 54908, Oct. 26, 2009; 80 FR 33184, June 11,
plicant under section 44(e) of the Act, 2015]
the applicant may amend the descrip-
tion or drawing of the mark only if: § 2.75 Amendment to change applica-
(1) The description or drawing of the tion to different register.
mark in the foreign registration cer- (a) An application for registration on
tificate supports the amendment; and the Principal Register under section
(2) The proposed amendment does not 1(a) or 44 of the Act may be changed to
materially alter the mark. The Office an application for registration on the
will determine whether a proposed Supplemental Register and vice versa
amendment materially alters a mark by amending the application to comply
by comparing the proposed amendment with the rules relating to the appro-
with the description or drawing of the priate register, as the case may be.
289
§ 2.76 37 CFR Ch. I (7–1–16 Edition)
(b) An application under section 1(b) (1) A verified statement alleging:

of the Act may be amended to change (i) The applicant believes the appli-
the application to a different register cant is the owner of the mark;
only after submission of an acceptable (ii) The mark is in use in commerce;
amendment to allege use under § 2.76 or (iii) The date of first use of the mark
statement of use under § 2.88. When anywhere on or in connection with the
such an application is changed from goods or services, and/or to indicate
the Principal Register to the Supple- membership in the collective organiza-
mental Register, the effective filing
tion specified in the application, and
date of the application is the date of
the date of first use of the mark in
the filing of the allegation of use under
commerce. If the amendment to allege
section 1(c) or 1(d) of the Act.
(c) In an application under section use specifies more than one item of
66(a) of the Act, the applicant may not goods or services in a class, the dates
amend the application to the Supple- of use are required for only one item of
mental Register. goods or services specified in that
class;
[54 FR 37593, Sept. 11, 1989, as amended at 68 (iv) The goods, services, and/or na-
FR 55765, Sept. 26, 2003]
ture of the collective membership orga-
§ 2.76 Amendment to allege use. nization specified in the application;
and
(a) When to file an amendment to allege
use. (1) An application under section (v) For a collective mark and certifi-
1(b) of the Act may be amended to al- cation mark, the applicant is exer-
lege use of the mark in commerce cising legitimate control over the use
under section 1(c) of the Act at any in commerce of the mark.
time between the filing of the applica- (2) One specimen showing how the ap-
tion and the date the examiner applicant, member, or authorized user
proves the mark for publication. There- uses the mark in commerce. See § 2.56
after, an allegation of use may be sub- for the requirements for specimens;
mitted only as a statement of use (3) The fee per class required by § 2.6;
under § 2.88 after the issuance of a no- (4) For a collective mark, the re-
tice of allowance under section 13(b)(2) quirements of § 2.44(a)(4)(i)(A);
of the Act. An amendment to allege use (5) For a certification mark, the re-
filed outside the time period specified quirements of § 2.45(a)(4)(i)(A)–(C); and
in this paragraph will not be reviewed. (6) The title ‘‘Amendment to Allege
(2)(i) For a trademark, service mark, Use’’ should appear at the top of the
collective trademark, collective serv- first page of the document, if not filed
ice mark, and certification mark, an through TEAS.
amendment to allege use may be filed (c) Minimum filing requirements for a
only when the mark has been in use in timely filed amendment to allege use. The
commerce on or in connection with all
Office will review a timely filed amend-
the goods or services specified in the
ment to allege use to determine wheth-
application for which the applicant
er it meets the following minimum re-
will seek registration. For a collective
quirements:
membership mark, an amendment to
allege use may be filed only when the (1) The fee required by § 2.6 for at
mark has been in use in commerce to least one class;
indicate membership in the collective (2) One specimen of the mark as used
organization specified in the applica- in commerce; and
tion for which the applicant will seek (3) The verified statement in para-
registration. graph (b)(1)(ii) of this section.
(ii) An amendment to allege use may (d) Deficiency notification. If the
be accompanied by a request in accord- amendment to allege use is filed within
ance with § 2.87 to divide out from the the permitted time period but does not
application the goods, services, or meet the minimum requirements speci-
classes not yet in use in commerce. fied in paragraph (c) of this section, the
(b) A complete amendment to allege use. Office will notify the applicant of the
A complete amendment to allege use deficiency. The deficiency may be cor-

must include the following: rected provided the mark has not been
290
approved for publication. If an accept- (j) Multiple-class application. For the

able amendment to correct the defi- requirements of a multiple-class appli-
ciency is not filed prior to approval of cation, see § 2.86.
the mark for publication, the amend- [80 FR 33184, June 11, 2015]
ment will not be examined, and the ap-
plicant must instead file a statement § 2.77 Amendments between notice of
of use after the notice of allowance allowance and statement of use.
issues. (a) The only amendments that may
(e) Notification of refusals and require- be entered in an application between
ments. A timely filed amendment to al- the issuance of the notice of allowance
lege use that meets the minimum re- and the submission of a statement of
quirements specified in paragraph (c) use are:
of this section will be examined in ac- (1) The deletion of specified goods or
cordance with §§ 2.61 through 2.69. If, as services, or the entire description of
a result of the examination of the the nature of the collective member-
amendment to allege use, the applicant ship organization, from the identifica-
is found not entitled to registration for tion;
any reason not previously stated, the (2) The deletion of a basis in a mul-
applicant will be notified and advised tiple-basis application; and
of the reasons and of any formal re- (3) A change of attorney or change of
quirements or refusals. The notifica- address.
tion shall restate or incorporate by ref- (b) Other amendments may be en-
erence all unresolved refusals or re- tered during this period only with the
quirements previously stated. The express permission of the Director,
amendment to allege use may be after consideration on petition under
amended in accordance with §§ 2.59 and § 2.146. If the Director determines that
2.71 through 2.75. the amendment requires review by the
(f) Withdrawal. An amendment to al- examining attorney, the petition will
lege use may be withdrawn for any rea- be denied and the amendment may be
son prior to approval of a mark for resubmitted with the statement of use
publication. in order for the applicant to preserve
(g) Verification not filed within reason- its right to review.
able time. If the verified statements in [73 FR 67770, Nov. 17, 2008, as amended at 80
paragraphs (b)(1)(ii) and, if applicable, FR 2311, Jan. 16, 2015; 80 FR 33185, June 11,
(b)(1)(v) of this section are not filed 2015]
within a reasonable time after they are
signed, the Office may require the ap- PUBLICATION AND POST PUBLICATION
plicant to submit substitute verified
§ 2.80 Publication for opposition.
statements attesting that the mark is
in use in commerce, and, if applicable, If, on examination or reexamination
the applicant is exercising legitimate of an application for registration on
control over the use of the mark in the Principal Register, it appears that
commerce. the applicant is entitled to have his
(h) An amendment to allege use is not a mark registered, the mark will be pub-
response but may include amendments. lished in the Official Gazette for opposi-
The filing of an amendment to allege tion. The mark will also be published
use does not constitute a response to in the case of an application to be
placed in interference or concurrent
any outstanding action by the exam-
use proceedings, if otherwise reg-
iner. See § 2.62. The amendment to al-
istrable.
lege use may include amendments in
accordance with §§ 2.59 and 2.71 through [41 FR 758, Jan. 5, 1976]
2.75.
(i) If the application is amended to con- § 2.81 Post publication.
current use under § 2.73, the amendment (a) Except in an application under
to allege use must include a verified section 1(b) of the Act for which no
statement modified in accordance with amendment to allege use under § 2.76

§ 2.33(f), § 2.44(d), or § 2.45(d). has been submitted and accepted, if no
291
§ 2.82 37 CFR Ch. I (7–1–16 Edition)
opposition is filed within the time per- on the Supplemental Register will be
mitted or all oppositions filed are dis- suspended by the Examiner of Trade-
missed, and if no interference is de- marks until the published or issued ap-
clared and no concurrent use pro- plication is registered or abandoned.
ceeding is instituted, the application
will be prepared for issuance of the cer- [37 FR 2880, Feb. 9, 1972, as amended at 54 FR
37594, Sept. 11, 1989]
tificate of registration as provided in
§ 2.151.
§ 2.84 Jurisdiction over published ap-
(b) In an application under section plications.
1(b) of the Act for which no amendment
to allege use under § 2.76 has been sub- (a) The trademark examining attor-
mitted and accepted, if no opposition is ney may exercise jurisdiction over an
filed within the time permitted or all application up to the date the mark is
oppositions filed are dismissed, and if published in the Official Gazette. After
no interference is declared, a notice of publication of an application under
allowance will issue. Thereafter, the section 1(a), 44 or 66(a) of the Act, the
applicant must submit a statement of trademark examining attorney may,
use as provided in § 2.88. with the permission of the Director, ex-
[54 FR 37594, Sept. 11, 1989, as amended at 73 ercise jurisdiction over the application.
FR 67770, Nov. 17, 2008; 80 FR 2311, Jan. 16, After publication of an application
2015] under section 1(b) of the Act, the trade-
mark examining attorney may exercise
§ 2.82 Marks on Supplemental Register jurisdiction over the application after
published only upon registration. the issuance of the notice of allowance
In the case of an application for reg- under section 13(b)(2) of the Act. After
istration on the Supplemental Register publication, and prior to issuance of a
the mark will not be published for op- notice of allowance in an application
position but if it appears, after exam- under section 1(b), the trademark ex-
ination or reexamination, that the ap- amining attorney may, with the per-
plicant is entitled to have the mark mission of the Director, exercise juris-
registered, a certificate of registration diction over the application.
will issue as provided in § 2.151. The
(b) After publication, but before the
mark will be published in the Official
certificate of registration is issued in
Gazette when registered.
an application under section 1(a), 44, or
[54 FR 37594, Sept. 11, 1989] 66(a) of the Act, or before the notice of
allowance is issued in an application
§ 2.83 Conflicting marks. under section 1(b) of the Act, an appli-
(a) Whenever an application is made cation that is not the subject of an
for registration of a mark which so re- inter partes proceeding before the
sembles another mark or marks pend- Trademark Trial and Appeal Board
ing registration as to be likely to cause may be amended if the amendment
confusion or mistake or to deceive, the meets the requirements of §§ 2.71, 2.72,
mark with the earliest effective filing and 2.74. Otherwise, an amendment to
date will be published in the Official such an application may be submitted
Gazette for opposition if eligible for the only upon petition to the Director to
Principal Register, or issued a certifi-
restore jurisdiction over the applica-
cate of registration if eligible for the
tion to the examining attorney for con-
Supplemental Register.
sideration of the amendment and fur-
(b) In situations in which conflicting
applications have the same effective ther examination. The amendment of
filing date, the application with the an application that is the subject of an
earliest date of execution will be pub- inter partes proceeding before the
lished in the Official Gazette for opposi- Trademark Trial and Appeal Board is
tion or issued on the Supplemental governed by § 2.133.
Register. [68 FR 55765, Sept. 26, 2003, as amended at 73
(c) Action on the conflicting applica-
FR 67770, Nov. 17, 2008; 80 FR 2311, Jan. 16,

tion which is not published in the Offi- 2015]
cial Gazette for opposition or not issued
292
CLASSIFICATION Services for the Purposes of the Reg-

istration of Marks. These changes are
§ 2.85 Classification schedules. listed in the International Classification
(a) International classification system. of Goods and Services for the Purposes of
Section 6.1 of this chapter sets forth the Registration of Marks, which is pub-
the international system of classifica- lished by the World Intellectual Prop-
tion for goods and services, which ap- erty Organization.
plies for all statutory purposes to: (1) If international classification
(1) Applications filed in the Office on changes pursuant to the Nice Agree-
or after September 1, 1973, and result- ment, the new classification applies
ing registrations; and only to applications filed on or after
(2) Registrations resulting from ap- the effective date of the change.
plications filed on or before August 31, (2) In a section 1 or section 44 appli-
1973, that have been amended to adopt cation filed before the effective date of
international classification pursuant a change to the Nice Agreement, the
to § 2.85(e)(3). applicant may amend the application
(b) Prior United States classification to comply with the requirements of the
system. Section 6.2 of this chapter sets current edition. The applicant must
forth the prior United States system of comply with the current edition for all
classification for goods and services, goods or services identified in the ap-
which applies for all statutory pur- plication. The applicant must pay the
poses to registrations resulting from fees for any added class(es).
applications filed on or before August (3) In a registration resulting from a
31, 1973, unless: section 1 or section 44 application that
(1) The registration has been amend- was filed before the effective date of a
ed to adopt international classification change to the Nice Agreement, the
pursuant to § 2.85(e)(3); or owner may amend the registration to
(2) The registration was issued under comply with the requirements of the
a classification system prior to that current edition. The owner must re-
set forth in § 6.2. classify all goods or services identified
(c) Certification marks and collective in the registration to the current edi-
membership marks. Sections 6.3 and 6.4 tion. The owner must pay the fee re-
specify the system of classification quired by § 2.6 for amendments under
which applies to certification marks section 7 of the Act. The owner may re-
and collective membership marks in classify registrations from multiple
applications based on sections 1 and 44 United States classes (§ 2.85(b)) into a
of the Act, and to registrations result- single international classification,
ing from applications based on sections where appropriate.
1 and 44. These sections do not apply to (f) Classification schedules shall not
applications under section 66(a) or to limit or extend the applicant’s rights,
registered extensions of protection. except that in a section 66(a) applica-
(d) Section 66(a) applications and reg- tion, the scope of the identification of
istered extensions of protection. In an ap- goods or services for purposes of per-
plication under section 66(a) of the Act missible amendments (see § 2.71(a)) is
or registered extension of protection, limited by the class, pursuant to
the classification cannot be changed § 2.85(d).
from the classification assigned by the
International Bureau of the World In- [73 FR 67770, Nov. 17, 2008]
tellectual Property Organization, un-
less the International Bureau corrects § 2.86 Multiple-class applications.
the classification. Classes cannot be (a) In a single application for a trade-
added, and goods or services cannot be mark, service mark, and/or collective
transferred from one class to another mark, an applicant may apply to reg-
in a multiple-class application. ister the same mark for goods, serv-
(e) Changes to Nice Agreement. The ices, and/or a collective membership
international classification system organization in multiple classes. In a
changes periodically, pursuant to the multiple-class application, the appli-
Nice Agreement Concerning the Inter- cant must satisfy the following, in ad-
national Classification of Goods and dition to the application requirements
293
§ 2.87 37 CFR Ch. I (7–1–16 Edition)
of § 2.32 for a trademark or service (c) In a single application, both sec-

mark, and § 2.44 for collective marks: tion 1(a) and 1(b) of the Act may not be
(1) For an application filed under sec- claimed for identical goods or services.
tion 1 or 44 of the Act, identify the (d) In a single application based on
goods or services in each international section 1 or 44 of the Act, goods or
class and/or the nature of the collective services in U.S. Classes A and/or B may
membership organization in U.S. Class not be combined with either goods or
200; for applications filed under section services in any international class or
66(a) of the Act, identify the goods, with a collective membership organiza-
services, and/or the nature of the col- tion in U.S. Class 200; and in a single
lective membership organization in application based on section 66(a) of
each international class assigned by the Act, a certification mark applica-
the International Bureau in the cor- tion may not be combined with goods,
responding international registration; services, or a collective membership
organization in any international
(2) Submit the application filing fee
class. See § 2.45(f).
required by § 2.6 for each class; and
(e) An amendment to allege use
(3) Include either dates of use and one under § 2.76 or a statement of use under
specimen for each class based on sec- § 2.88 for multiple classes must include,
tion 1(a) of the Act; or a statement for each class, the required fee, dates of
that the applicant has a bona fide in- use, and one specimen. When requested
tention to use the mark in commerce, by the Office, additional specimens
for a trademark or service mark, or a must be provided. The applicant may
statement that the applicant has a not file an amendment to allege use or
bona fide intention, and is entitled, to a statement of use until the applicant
exercise legitimate control over the has used the mark on or in connection
use of the mark in commerce, for col- with all the goods, services, or classes,
lective marks, for each class based on unless the applicant also files a request
section 1(b), 44, or 66(a) of the Act. to divide under § 2.87.
When requested by the Office, addi- (f) The Office will issue a single cer-
tional specimens must be provided. tificate of registration for the mark,
(b) In a single application for a certifi- unless the applicant files a request to
cation mark, an applicant may apply to divide under § 2.87.
register the same certification mark [80 FR 33185, June 11, 2015]
for goods and services. In such case,
the applicant must satisfy the fol- § 2.87 Dividing an application.
lowing, in addition to the application (a) Application may be divided. An ap-
requirements of § 2.45: plication may be divided into two or
(1) For an application filed under sec- more separate applications upon the
tion 1 or 44 of the Act, identify the payment of a fee for each new applica-
goods in U.S. Class A and the services tion created and submission by the ap-
in U.S. Class B; for applications filed plicant of a request in accordance with
under section 66(a) of the Act, identify paragraph (d) of this section.
the goods and services in each inter- (b) Fee. In the case of a request to di-
national class assigned by the Inter- vide out one or more entire classes
national Bureau in the corresponding from an application, only the fee for di-
international registration; viding an application as set forth in
(2) Submit the application filing fee § 2.6(a)(19) will be required. However, in
required by § 2.6 for both classes; and the case of a request to divide out
(3) Include either dates of use and one some, but not all, of the goods or serv-
specimen for each class based on sec- ices in a class, the applicant must sub-
tion 1(a) of the Act; or a statement mit the application filing fee as set
that the applicant has a bona fide in- forth in § 2.6(a)(1) for each new separate
tention, and is entitled, to exercise le- application to be created by the divi-
gitimate control over the use of the sion, in addition to the fee for dividing
mark in commerce for each class based an application.
on section 1(b), 44, or 66(a) of the Act. (c) Time for filing. (1) A request to di-
When requested by the Office, addi- vide an application may be filed at any
tional specimens must be provided. time between the application filing
294
date and the date on which the trade- (3) In a multiple-basis application in
mark examining attorney approves the which a notice of allowance has issued,
mark for publication; or during an op- if the applicant files a request to divide
position, concurrent use, or inter- out the goods/services having the basis
ference proceeding, upon motion grant- or bases to which the notice of allow-
ed by the Trademark Trial and Appeal ance does not pertain before the dead-
Board. line for filing the statement of use, the
(2) In an application under section new (child) applications created by the
1(b) of the Act, a request to divide may division are not affected by the notice
also be filed with a statement of use of allowance.
under § 2.88 or at any time between the (f) Signature. The request to divide
filing of a statement of use and the must be signed by the applicant, some-
date on which the trademark exam-
one with legal authority to bind the
ining attorney approves the mark for
applicant (e.g., a corporate officer or
registration.
general partner of a partnership), or a
(3) In a multiple-basis application, a
practitioner who meets the require-
request to divide out goods or services
having a particular basis may also be ments of § 11.14, in accordance with the
filed during the period between the requirements of § 2.193(e)(2).
issuance of the notice of allowance (g) Section 66(a) applications—change
under section 13(b)(2) of the Act and of ownership with respect to some but not
the filing of a statement of use under all of the goods or services. (1) When the
§ 2.88. International Bureau of the World In-
(d) Form. A request to divide an appli- tellectual Property Organization noti-
cation should be made in a separate fies the Office that an international
document from any other amendment registration has been divided as the re-
or response in the application. The sult of a change of ownership with re-
title ‘‘Request to Divide Application’’ spect to some but not all of the goods
should appear at the top of the first or services, the Office will construe the
page of the document. International Bureau’s notice as a re-
(e) Outstanding time periods apply to quest to divide. The Office will record
newly created applications. Any time pe- the partial change of ownership in the
riod for action by the applicant which Assignment Services Branch, and di-
is outstanding in the original applica- vide out the assigned goods/services
tion at the time of the division will from the original (parent) application.
apply to each separate new application The Office will create a new (child) ap-
created by the division, except as fol- plication serial number, and enter the
lows: information about the new application
(1) If an Office action pertaining to in its automated records.
less than all the classes in a multiple- (2) To obtain a certificate of registra-
class application is outstanding, and
tion in the name of the new owner for
the applicant files a request to divide
the goods/services that have been di-
out the goods, services, and/or class(es)
vided out, the new owner must pay the
to which the Office action does not per-
tain before the response deadline, a re- fee(s) for the request to divide, as re-
sponse to the Office action is not due in quired by § 2.6 and paragraph (b) of this
the new (child) application(s) created section. The examining attorney will
by the division of the application; issue an Office action in the child ap-
(2) If an Office action pertaining to plication requiring the new owner to
less than all the bases in a multiple- pay the required fee(s). If the owner of
basis application is outstanding, and the child application fails to respond,
the applicant files a request to divide the child application will be aban-
out the goods/services having the basis doned. It is not necessary for the new
or bases to which the Office action does owner to file a separate request to di-
not pertain before the response dead- vide.
line, a response to the Office action is (3) The Office will not divide a sec-
not due in the new (child) application 66(a) application based upon a
tion(s) created by the division of the change of ownership unless the Inter-
application; or national Bureau notifies the Office
295
§ 2.88 37 CFR Ch. I (7–1–16 Edition)
that the international registration has are required for only one item of goods
been divided. or services specified in that class;
(iv) The goods, services, and/or na-
[73 FR 67771, Nov. 17, 2008, as amended at 74
FR 54908, Oct. 26, 2009]
ture of the collective membership orga-
nization specified in the notice of al-
POST NOTICE OF ALLOWANCE lowance. The goods or services speci-
fied in a statement of use must con-
§ 2.88 Statement of use after notice of form to those goods or services speci-
allowance. fied in the notice of allowance for
trademark, service mark, collective
(a) When to file a statement of use. (1)
trademark, collective service mark, or
In an application under section 1(b) of
certification mark applications. Any
the Act, a statement of use, required
goods or services specified in the notice
under section 1(d) of the Act, must be
of allowance that are omitted from the
filed within six months after issuance
identification of goods or services in
of a notice of allowance under section
the statement of use will be presumed
13(b)(2) of the Act, or within an exten-
to be deleted and the deleted goods or
sion of time granted under § 2.89. A
services may not be reinserted in the
statement of use filed prior to issuance
application. For collective membership
of a notice of allowance is premature
mark applications, the description of
and will not be reviewed.
the nature of the collective member-
(2)(i) For a trademark, service mark,
ship organization in the statement of
collective trademark, collective serv-
use must conform to that specified in
ice mark, and certification mark, a
the notice of allowance; and
statement of use may be filed only
(v) For a collective mark and certifi-
when the mark has been in use in com-
cation mark, the applicant is exer-
merce on or in connection with all the
cising legitimate control over the use
goods or services specified in the notice
in commerce of the mark;
of allowance for which the applicant
(2) One specimen showing how the ap-
will seek registration in that applica-
plicant, member, or authorized user
tion. For a collective membership
uses the mark in commerce. See § 2.56
mark, a statement of use may be filed
for the requirements for specimens;
only when the mark has been in use in
(3) Fee(s). The fee required by § 2.6 per
commerce to indicate membership in
class. The applicant must pay a filing
the collective membership organiza-
fee sufficient to cover at least one class
tion specified in the notice of allow-
within the statutory time for filing the
ance for which the applicant will seek
statement of use, or the application
registration in that application.
will be abandoned. If the applicant sub-
(ii) A statement of use may be ac- mits a fee insufficient to cover all the
companied by a request in accordance classes in a multiple-class application,
with § 2.87 to divide out from the appli- the applicant should specify the classes
cation the goods, services, or classes to be abandoned. If the applicant time-
not yet in use in commerce. ly submits a fee sufficient to pay for at
(b) A complete statement of use. A com- least one class, but insufficient to
plete statement of use must include cover all the classes, and the applicant
the following: has not specified the class(es) to be
(1) A verified statement alleging: abandoned, the Office will issue a no-
(i) The applicant believes the appli- tice granting the applicant additional
cant is the owner of the mark; time to submit the fee(s) for the re-
(ii) The mark is in use in commerce; maining class(es) or to specify the
(iii) The date of first use of the mark class(es) to be abandoned. If the appli-
anywhere on or in connection with the cant does not submit the required
goods, services, and/or to indicate fee(s) or specify the class(es) to be
membership in the collective organiza- abandoned within the set time period,
tion specified in the application, and the Office will apply the fees paid, be-
the date of first use of the mark in ginning with the lowest numbered
commerce. If the statement of use class, in ascending order. The Office
specifies more than one item of goods will delete the class(es) not covered by
or services in a class, the dates of use the fees submitted;
296
(4) For a collective mark, the re- paragraphs (b)(1)(ii) and, if applicable,
quirements of § 2.44(a)(4)(i)(A); (b)(1)(v) of this section are not filed
(5) For a certification mark, the re- within a reasonable time after they are
quirements of § 2.45(a)(4)(i)(A) through signed, the Office may require the ap-
(C); and plicant to submit substitute verified
(6) The title ‘‘Statement of Use’’ statements attesting that the mark is
should appear at the top of the first in use in commerce, and, if applicable,
page of the document, if not filed the applicant is exercising legitimate
through TEAS. control over the use of the mark in
(c) Minimum filing requirements for a commerce.
timely filed statement of use. The Office (h) Amending the application. The
will review a timely filed statement of statement of use may include amend-
use to determine whether it meets the ments in accordance with §§ 2.51, 2.59,
following minimum requirements: and 2.71 through 2.75.
(1) The fee required by § 2.6 for at (i) Concurrent use. If the application
least one class; is amended to concurrent use under
(2) One specimen of the mark as used § 2.73, the statement of use must in-
in commerce; and clude a verified statement modified in
(3) The verified statement in para- accordance with § 2.33(f), § 2.44(d), or
graph (b)(1)(ii) of this section. If this § 2.45(d).
verified statement is unsigned or (j) Multiple-class application. For the
signed by the wrong party, the appli- requirements of a multiple-class appli-
cant must submit a substitute verified cation, see § 2.86.
statement on or before the statutory (k) Abandonment. The failure to time-
deadline for filing the statement of ly file a statement of use which meets
use. the minimum requirements specified in
(d) Deficiency notification. If the state- paragraph (c) of this section shall re-
ment of use is filed within the per- sult in the abandonment of the applica-
mitted time period but does not meet tion.
the minimum requirements specified in [80 FR 33185, June 11, 2015]
paragraph (c) of this section, the Office
will notify the applicant of the defi- § 2.89 Extensions of time for filing a
ciency. If the time permitted for the statement of use.
applicant to file a statement of use has (a) First extension request after
not expired, the applicant may correct issuance of notice of allowance. The ap-
the deficiency. plicant may request a six-month exten-
(e) Notification of refusals and require- sion of time to file the statement of
ments. A timely filed statement of use use required by § 2.88. The extension re-
that meets the minimum requirements quest must be filed within six months
specified in paragraph (c) of this sec- of the date of issuance of the notice of
tion will be examined in accordance allowance under section 13(b)(2) of the
with §§ 2.61 through 2.69. If, as a result Act and must include the following:
of the examination of the statement of (1) A written request for an extension
use, the applicant is found not entitled of time to file the statement of use;
to registration, the applicant will be (2) The fee required by § 2.6 per class.
notified and advised of the reasons and The applicant must pay a filing fee suf-
of any formal requirements or refusals. ficient to cover at least one class with-
The statement of use may be amended in the statutory time for filing the ex-
in accordance with §§ 2.59 and 2.71 tension request, or the request will be
through 2.75. denied. If the applicant submits a fee
(f) Statement of use may not be with- insufficient to cover all the classes in a
drawn. The applicant may not with- multiple-class application, the appli-
draw a timely filed statement of use to cant should specify the classes to be
return to the previous status of await- abandoned. If the applicant timely sub-
ing submission of a statement of use, mits a fee sufficient to pay for at least
regardless of whether it is in compli- one class, but insufficient to cover all
ance with paragraph (c) of this section. the classes, and the applicant has not
(g) Verification not filed within reason- specified the class(es) to be abandoned,
able time. If the verified statements in the Office will issue a notice granting
297
§ 2.89 37 CFR Ch. I (7–1–16 Edition)
the applicant additional time to sub- (c) Four subsequent extension requests
mit the fee(s) for the remaining class- permitted. Extension requests specified
es, or specify the class(es) to be aban- in paragraph (b) of this section will be
doned. If the applicant does not submit granted only in six-month increments
the required fee(s) or specify the and may not aggregate more than 24
class(es) to be abandoned within the months total.
set time period, the Office will apply (d) Good cause. A showing of good
the fees paid, beginning with the low- cause must include:
est numbered class, in ascending order. (1) For a trademark or service mark,
The Office will delete the class(es) not a statement of the applicant’s ongoing
covered by the fees submitted; and efforts to make use of the mark in
(3) A verified statement that the ap- commerce on or in connection with
plicant has a continued bona fide in- each of the relevant goods or services.
tention to use the mark in commerce, Those efforts may include product or
specifying the relevant goods or serv- service research or development, mar-
ices, for trademarks or service marks; ket research, manufacturing activities,
or that the applicant has a continued promotional activities, steps to acquire
bona fide intention, and is entitled, to distributors, steps to obtain govern-
exercise legitimate control over the mental approval, or other similar ac-
use of the mark in commerce, speci- tivities. In the alternative, the appli-
fying the relevant goods, services, or cant must submit a satisfactory expla-
collective membership organization, nation for the failure to make efforts
for collective marks or certification
to use the mark in commerce.
marks. If this verified statement is un-
(2) For a collective mark, a state-
signed or signed by the wrong party,
ment of ongoing efforts to make use of
the applicant must submit a substitute
verified statement within six months the mark in commerce by members on
of the date of issuance of the notice of or in connection with each of the rel-
allowance. evant goods or services or in connec-
(b) Subsequent extension requests. Be- tion with the applicant’s collective
fore the expiration of the previously membership organization. Those ef-
granted extension of time, the appli- forts may include the development of
cant may request further six-month ex- standards, the steps taken to acquire
tensions of time to file the statement members such as marketing and pro-
of use by submitting the following: motional activities targeted to poten-
(1) A written request for an extension tial members, training members re-
of time to file the statement of use; garding the standards, or other similar
(2) The requirements of paragraph activities. In the alternative, the appli-
(a)(2) of this section for a fee; cant must submit a satisfactory expla-
(3) A verified statement that the ap- nation for the failure to make efforts
plicant has a continued bona fide infor applicant’s members to use the
tention to use the mark in commerce, mark in commerce.
specifying the relevant goods or serv- (3) For a certification mark, a state-
ices, for trademarks or service marks; ment of ongoing efforts to make use of
or that the applicant has a continued the mark in commerce by authorized
bona fide intention, and is entitled, to users on or in connection with each of
exercise legitimate control over the the relevant goods or services. Those
use of the mark in commerce, speci- efforts may include the development of
fying the relevant goods, services, or certification standards, steps taken to
collective membership organization, obtain governmental approval or ac-
for collective marks or certification quire authorized users, marketing and
marks. If this verified statement is un- promoting the recognition of the cer-
signed or signed by the wrong party, tification program or of the goods or
the applicant must submit a substitute services that meet the certification
verified statement before the expira- standards of the applicant, training au-
tion of the previously granted exten- thorized users regarding the standards,
sion; and or other similar activities. In the alter-
(4) A showing of good cause, as speci- native, the applicant must submit a
fied in paragraph (d) of this section. satisfactory explanation for the failure
298
to make efforts for applicant’s author- (g) Notice of grant or denial. The appli-
ized users to use the mark in com- cant will be notified of the grant or de-
merce. nial of a request for an extension of
(e) Extension request filed in conjunc- time, and of the reasons for a denial.
tion with or after a statement of use. (1) Failure to notify the applicant of the
An applicant may file one request for a grant or denial of the request prior to
six-month extension of time for filing a the expiration of the existing period or
statement of use when filing a state- requested extension does not relieve
ment of use or after filing a statement the applicant of the responsibility of
of use if time remains in the existing timely filing a statement of use under
six-month period in which the state- § 2.88. If, after denial of an extension re-
ment of use was filed, provided that the quest, there is time remaining in the
time requested would not extend be- existing six-month period for filing a
yond 36 months from the date of statement of use, applicant may sub-
issuance of the notice of allowance. mit a substitute request for extension
Thereafter, applicant may not request of time to correct the defects of the
any further extensions of time. prior request. Otherwise, the only re-
(2) A request for an extension of time course available after denial of a re-
that is filed under paragraph (e)(1) of quest for an extension of time is to file
this section, must comply with all the a petition to the Director in accord-
requirements of paragraph (a) of this ance with § 2.66 or § 2.146. A petition
section, if it is an applicant’s first ex- from the denial of an extension request
tension request, or paragraph (b) of
must be filed within two months of the
this section, if it is a second or subse-
date of issuance of the denial of the re-
quent extension request. However, in a
quest. If the petition is granted, the
request under paragraph (b) of this sec-
term of the requested six-month exten-
tion, an applicant may satisfy the re-
quirement for a showing of good cause sion that was the subject of the peti-
by asserting the applicant believes the tion will run from the date of expira-
applicant has made valid use of the tion of the previously existing six-
mark in commerce, as evidenced by the month period for filing a statement of
submitted statement of use, but that if use.
the statement of use is found by the Of- (h) Verification not filed within reason-
fice to be fatally defective, the appli- able time. If the verified statement in
cant will need additional time in which paragraph (a)(3) or (b)(3) of this section
to file a new statement of use. is not filed within a reasonable time
(f) Goods or services. For trademark, after it is signed, the Office may re-
service mark, collective trademark, quire the applicant to submit a sub-
collective service mark, or certifi- stitute verified statement attesting
cation mark applications, the goods or that the applicant has a continued
services specified in a request for an bona fide intention to use the mark in
extension of time for filing a statement commerce, for trademarks or service
of use must conform to those goods or marks; or that the applicant has a con-
services specified in the notice of al- tinued bona fide intention, and is enti-
lowance. Any goods or services speci- tled, to exercise legitimate control
fied in the notice of allowance that are over the use of the mark in commerce,
omitted from the identification of for collective marks or certification
goods or services in the request for ex- marks.
tension of time will be presumed to be
deleted and the deleted goods or serv- [80 FR 33186, June 11, 2015]
ices may not thereafter be reinserted
INTERFERENCES AND CONCURRENT USE
in the application. For collective mem-
bership mark applications, the descrip- PROCEEDINGS
tion of the nature of the collective
membership organization in the re- AUTHORITY: Secs. 2.91 to 2.99 also issued
under secs. 16, 17, 60 Stat. 434; 15 U.S.C. 1066,
quest for extension of time must con-
1067.
form to that set forth in the notice of
allowance.
299
§ 2.91 37 CFR Ch. I (7–1–16 Edition)
§ 2.91 Declaration of interference. §§ 2.94–2.95 [Reserved]

(a) An interference will not be de- § 2.96 Issue; burden of proof.
clared between two applications or be-
tween an application and a registration The issue in an interference between
except upon petition to the Director. applications is normally priority of
Interferences will be declared by the use, but the rights of the parties to
Director only upon a showing of ex- registration may also be determined.
traordinary circumstances which The party whose application involved
would result in a party being unduly in the interference has the latest filing
prejudiced without an interference. In date is the junior party and has the
ordinary circumstances, the avail- burden of proof. When there are more
ability of an opposition or cancellation than two parties to an interference, a
proceeding to the party will be deemed party shall be a junior party to and
to remove any undue prejudice. shall have the burden of proof as
against every other party whose appli-
(b) Registrations and applications to
cation involved in the interference has
register on the Supplemental Register,
an earlier filing date. If the involved
registrations under the Act of 1920, and
applications of any parties have the
registrations of marks the right to use
same filing date, the application with
of which has become incontestable are
the latest date of execution will be
not subject to interference. deemed to have the latest filing date
[37 FR 2881, Feb. 9, 1972, as amended at 54 FR and that applicant will be the junior
34897, Aug. 22, 1989] party. The issue in an interference be-
tween an application and a registration
§ 2.92 Preliminary to interference. shall be the same, but in the event the
An interference which has been de- final decision is adverse to the reg-
clared by the Director will not be insti- istrant, a registration to the applicant
tuted by the Trademark Trial and Ap- will not be authorized so long as the
peal Board until the Examiner of interfering registration remains on the
Trademarks has determined that the register.
marks which are to form the subject [48 FR 23135, May 23, 1983; 48 FR 27225, June
matter of the controversy are reg- 14, 1983]
istrable, and all of the marks have been
published in theOfficial Gazette for op- § 2.97 [Reserved]
position.
§ 2.98 Adding party to interference.
[54 FR 34897, Aug. 22, 1989] A party may be added to an inter-
ference only upon petition to the Di-
§ 2.93 Institution of interference.
rector by that party. If an application
An interference is instituted by the which is or might be the subject of a
issuance of a notice of interference to petition for addition to an interference
the parties. The notice shall be sent to is not added, the examiner may sus-
each applicant, in care of the appli- pend action on the application pending
cant’s attorney or other representative termination of the interference pro-
of record, if any, and if one of the par- ceeding.
ties is a registrant, the notice shall be
[48 FR 23135, May 23, 1983]
sent to the registrant or the reg-
istrant’s assignee of record. The notice § 2.99 Application to register as con-
shall give the name and address of current user.
every adverse party and of the adverse
(a) An application for registration as
party’s attorney or other authorized
a lawful concurrent user will be exam-
representative, if any, together with
ined in the same manner as other ap-
the serial number and date of filing and
plications for registration.
publication of each of the applications,
(b) If it appears that the applicant is
or the registration number and date of
entitled to have the mark registered,
issuance of each of the registrations,
subject to a concurrent use proceeding,
involved.
the mark will be published in the Offi-
[73 FR 67772, Nov. 17, 2008] cial Gazette as provided by § 2.80.
300
(c) If no opposition is filed, or if all date between the filing dates of the
oppositions that are filed are dismissed earliest involved application and the
or withdrawn, the Trademark Trial and latest involved application is a junior
Appeal Board will send a notification party to every party whose involved
to the applicant for concurrent use reg- application has an earlier filing date. If
istration (plaintiff) and to each appli- any applications have the same filing
cant, registrant or user specified as a date, the application with the latest
concurrent user in the application (de- date of execution will be deemed to
fendants). The notification for each de- have the latest filing date and that ap-
fendant shall state the name and ad- plicant will be the junior party. A per-
dress of the plaintiff and of the plain- son specified as an excepted user in a
tiff’s attorney or other authorized rep- concurrent use application but who has
resentative, if any, together with the not filed an application shall be consid-
serial number and filing date of the ap- ered a party senior to every party that
plication. If a party has provided the has an application involved in the pro-
Office with an e-mail address, the noti- ceeding.
fication may be transmitted via e-mail. (f) When a concurrent use registra-
(d)(1) Within ten days from the date tion is sought on the basis that a court
of the Board’s notification, the appli- of competent jurisdiction has finally
cant for concurrent use registration determined that the parties are enti-
must serve copies of its application, tled to use the same or similar marks
specimens and drawing on each appli- in commerce, a concurrent use reg-
cant, registrant or user specified as a istration proceeding will not be insti-
concurrent user in the application for tuted if all of the following conditions
registration, as directed by the Board. are fulfilled:
If any service copy is returned to the (1) The applicant is entitled to reg-
concurrent use applicant as undeliver- istration subject only to the concur-
able, the concurrent use applicant rent lawful use of a party to the court
must notify the Board within ten days proceeding; and
of receipt of the returned copy. (2) The court decree specifies the
(2) An answer to the notice is not re- rights of the parties; and
quired in the case of an applicant or (3) A true copy of the court decree is
registrant whose application or reg- submitted to the examiner; and
istration is specified as a concurrent (4) The concurrent use application
user in the application, but a state- complies fully and exactly with the
ment, if desired, may be filed within court decree; and
forty days after the issuance of the no- (5) The excepted use specified in the
tice; in the case of any other party concurrent use application does not in-
specified as a concurrent user in the volve a registration, or any involved
application, an answer must be filed registration has been restricted by the
within forty days after the issuance of Director in accordance with the court
the notice. decree.
(3) If an answer, when required, is not If any of the conditions specified in
filed, judgment will be entered pre- this paragraph is not satisfied, a con-
cluding the specified user from claim- current use registration proceeding
ing any right more extensive than that shall be prepared and instituted as pro-
acknowledged in the application(s) for vided in paragraphs (a) through (e) of
concurrent use registration, but the this section.
applicant(s) will remain with the bur- (g) Registrations and applications to
den of proving entitlement to registra- register on the Supplemental Register
tion(s). and registrations under the Act of 1920
(e) The applicant for a concurrent use are not subject to concurrent use reg-
registration has the burden of proving istration proceedings. Applications
entitlement thereto. If there are two or under section 1(b) of the Act of 1946 are
more applications for concurrent use subject to concurrent use registration
registration involved in a proceeding, proceedings only after the applicant
the party whose application has the files an acceptable allegation of use
latest filing date is the junior party. A under § 2.76 or § 2.88. Applications based
party whose application has a filing solely on section 44 or section 66(a) of
301
§ 2.101 37 CFR Ch. I (7–1–16 Edition)
the Act are not subject to concurrent (1) An opposition to an application

use registration proceedings. based on section 1 or 44 of the Act must
(h) The Trademark Trial and Appeal be filed either on paper or through
Board will consider and determine con- ESTTA.
current use rights only in the context (2) An opposition to an application
of a concurrent use registration pro- based on section 66(a) of the Act must
ceeding. be filed through ESTTA.
(c) The opposition must be filed with-
[48 FR 23135, May 23, 1983; 48 FR 27225, 27226, in thirty days after publication (§ 2.80)
June 14, 1983, as amended at 54 FR 37596, of the application being opposed or
Sept. 11, 1989; 72 FR 42258, Aug. 1, 2007; 73 FR
within an extension of time (§ 2.102) for
67772, Nov. 17, 2008]
filing an opposition.
OPPOSITION (d)(1) The opposition must be accom-
panied by the required fee for each
party joined as opposer for each class
under secs. 13, 17, 60 Stat. 433, 434; 15 U.S.C. in the application for which registra-
1063, 1067. tion is opposed (see § 2.6).
(2) An otherwise timely opposition
§ 2.101 Filing an opposition. will not be accepted via ESTTA unless
the opposition is accompanied by a fee
(a) An opposition proceeding is com-
that is sufficient to pay in full for each
menced by filing in the Office a timely
named party opposer to oppose the reg-
notice of opposition with the required
istration of a mark in each class speci-
fee. The notice must include proof of
fied in the opposition.
service on the applicant, or its attor-
(3) If an otherwise timely opposition
ney or domestic representative of
is submitted on paper, the following is
record, at the correspondence address applicable if less than all required fees
of record in the Office, as detailed in are submitted:
§§ 2.101(b) and 2.119. (i) If the opposition is accompanied
(b) Any person who believes that he, by no fee or a fee insufficient to pay for
she or it would be damaged by the reg- one person to oppose the registration
istration of a mark on the Principal of a mark in at least one class, the op-
Register may file an opposition ad- position will be refused.
dressed to the Trademark Trial and (ii) If the opposition is accompanied
Appeal Board and must serve a copy of by fees sufficient to pay for one person
the opposition, including any exhibits, to oppose registration in at least one
on the attorney of record for the appli- class, but fees are insufficient to op-
cant or, if there is no attorney, on the pose registration in all the classes in
applicant or on the applicant’s domes- the application, and the particular
tic representative, if one has been ap- class or classes against which the oppo-
pointed, at the correspondence address sition is filed is not specified, the oppo-
of record in the Office. The opposer sition will be presumed to be against
must include with the opposition proof the class or classes in ascending nu-
of service pursuant to § 2.119 at the cor- merical order, including only the num-
respondence address of record in the ber of classes in the application for
Office. If any service copy of the oppo- which sufficient fees have been sub-
sition is returned to the opposer as un- mitted.
deliverable, the opposer must notify (iii) If persons are joined as party op-
the Board within ten days of receipt of posers, each must submit a fee for each
the returned copy. The opposition need class for which opposition is sought. If
not be verified, but must be signed by the fees submitted are sufficient to pay
the opposer or the opposer’s attorney, for one person to oppose registration in
as specified in § 11.1 of this chapter, or at least one class, but are insufficient
other authorized representative, as for each named party opposer, the
specified in § 11.14(b) of this chapter. first-named party will be presumed to
Electronic signatures pursuant to be the party opposer. Additional par-
§ 2.193(c) are required for oppositions ties will be deemed to be party oppos-
filed through ESTTA under paragraphs ers only to the extent that the fees
(b)(1) or (2) of this section. submitted are sufficient to pay the fee
302
due for each party opposer. If persons able certainty. Any opposition filed
are joined as party opposers against a during an extension of time should be
multiple class application, the fees in the name of the person to whom the
submitted are insufficient, and no spec- extension was granted. An opposition
ification of opposers and classes is may be accepted if the person in whose
made at the time the party is joined, name the extension was requested was
the fees submitted will be applied first misidentified through mistake or if the
on behalf of the first-named opposer opposition is filed in the name of a per-
against as many of the classes in the son in privity with the person who re-
application as the submitted fees are quested and was granted the extension
sufficient to pay. Any excess will be ap- of time.
plied on behalf of the second-named (c) The time for filing an opposition
party to the opposition against the shall not be extended beyond 180 days
classes in the application in ascending from the date of publication. Any re-
numerical order. quest to extend the time for filing an
(4) The filing date of an opposition is opposition must be filed before thirty
the date of receipt in the Office of the days have expired from the date of pub-
notice of opposition, with proof of serv- lication or before the expiration of a
ice on the applicant, or its attorney or previously granted extension of time,
domestic representative of record, if as appropriate. Requests to extend the
one has been appointed, at the cor- time for filing an opposition must be
respondence address of record in the filed as follows:
Office, and the required fee, unless the (1) A person may file a first request
notice is filed in accordance with for either a thirty-day extension of
§ 2.198. time, which will be granted upon re-
quest, or a ninety-day extension of
time, which will be granted only for
FR 42258, Aug. 1, 2007; 73 FR 47685, Aug. 14,
2008; 74 FR 54909, Oct. 26, 2009] good cause shown.
(2) If a person was granted a thirty-
§ 2.102 Extension of time for filing an day extension of time, that person may
opposition. file a request for an additional sixty-
(a) Any person who believes that he, day extension of time, which will be
she or it would be damaged by the reg- granted only for good cause shown.
istration of a mark on the Principal (3) After receiving one or two exten-
Register may file in the Office a writ- sions of time totaling ninety days, a
ten request, addressed to the Trade- person may file one final request for an
mark Trial and Appeal Board, to ex- extension of time for an additional
tend the time for filing an opposition. sixty days. The Board will grant this
The written request need not be request only upon written consent or
verified, but must be signed by the po- stipulation signed by the applicant or
tential opposer or by the potential op- its authorized representative, or a
poser’s attorney, as specified in § 11.1 of written request by the potential op-
this chapter, or authorized representa- poser or its authorized representative
tive, as specified in § 11.14(b) of this stating that the applicant or its au-
chapter. Electronic signatures pursu- thorized representative has consented
ant to § 2.193(c) are required for elec- to the request, or a showing of extraor-
tronically filed extension requests. dinary circumstances. No further ex-
(1) A written request to extend the tensions of time to file an opposition
time for filing an opposition to an ap- will be granted under any cir-
plication filed under section 1 or 44 of cumstances.
the Act must be filed either on paper or [68 FR 55765, Sept. 26, 2003, as amended at 73
through ESTTA. FR 47685, Aug. 14, 2008; 74 FR 54909, Oct. 26,
(2) A written request to extend the 2009]
time for filing an opposition to an ap-
plication filed under section 66(a) of § 2.104 Contents of opposition.
the Act must be filed through ESTTA. (a) The opposition must set forth a
(b) A written request to extend the short and plain statement showing why
time for filing an opposition must iden- the opposer believes he, she or it would
tify the potential opposer with reason- be damaged by the registration of the
303
§ 2.105 37 CFR Ch. I (7–1–16 Edition)
opposed mark and state the grounds for cation is being prosecuted by an attor-
opposition. ney, as defined in § 11.1 of this chapter,
(b) Oppositions to different applica- the Board shall send the documents de-
tions owned by the same party may be scribed in this section to applicant’s
joined in a consolidated opposition attorney.
when appropriate, but the required fee (2) If the opposed application is not
must be included for each party joined being prosecuted by an attorney but a
as opposer for each class in which reg- domestic representative has been ap-
istration is opposed in each application pointed, the Board will send the docu-
against which the opposition is filed. ments described in this section to the
domestic representative, unless appli-
FR 55766, Sept. 26, 2003] cant designates in writing another cor-
respondence address.
§ 2.105 Notification to parties of oppo- (3) If the opposed application is not
sition proceeding(s). being prosecuted by an attorney, and
(a) When an opposition in proper no domestic representative has been
form (see §§ 2.101 and 2.104), with proof appointed, the Board will send the doc-
of service in accordance with § 2.101(b), uments described in this section di-
has been filed and the correct fee has rectly to applicant, unless applicant
been submitted, the Trademark Trial designates in writing another cor-
and Appeal Board shall prepare a noti- respondence address.
fication, which shall identify the title [68 FR 55766, Sept. 26, 2003, as amended at 72
and number of the proceeding and the FR 42258, Aug. 1, 2007; 73 FR 47685, Aug. 14,
application involved and shall des- 2008]
ignate a time, not less than thirty days
from the mailing date of the notifica- § 2.106 Answer.
tion, within which an answer must be (a) If no answer is filed within the
filed. If a party has provided the Office time set, the opposition may be de-
with an e-mail address, the notification cided as in case of default.
may be transmitted via e-mail. (b)(1) An answer shall state in short
(b) The Board shall forward a copy of and plain terms the applicant’s de-
the notification to opposer, as follows: fenses to each claim asserted and shall
(1) If the opposition is transmitted by admit or deny the averments upon
an attorney, or a written power of at- which the opposer relies. If the appli-
torney is filed, the Board will send the cant is without knowledge or informa-
notification to the attorney transmit- tion sufficient to form a belief as to the
ting the opposition or to the attorney truth of an averment, applicant shall
designated in the power of attorney, so state and this will have the effect of
provided that the person is an ‘‘attor- a denial. Denials may take any of the
ney’’ as defined in § 11.1 of this chapter. forms specified in Rule 8(b) of the Fed-
(2) If opposer is not represented by an eral Rules of Civil Procedure. An an-
attorney in the opposition, but opposer swer may contain any defense, includ-
has appointed a domestic representa- ing the affirmative defenses of unclean
tive, the Board will send the notifica- hands, laches, estoppel, acquiescence,
tion to the domestic representative, fraud, mistake, prior judgment, or any
unless opposer designates in writing other matter constituting an avoidance
another correspondence address. or affirmative defense. When pleading
(3) If opposer is not represented by an special matters, the Federal Rules of
attorney in the opposition, and no do- Civil Procedure shall be followed. A
mestic representative has been ap- reply to an affirmative defense need
pointed, the Board will send the notifi- not be filed. When a defense attacks
cation directly to opposer, unless op- the validity of a registration pleaded in
poser designates in writing another the opposition, paragraph (b)(2) of this
correspondence address. section shall govern. A pleaded reg-
(c) The Board shall forward a copy of istration is a registration identified by
the notification to applicant, as fol- number and date of issuance in an
lows: original notice of opposition or in any
(1) If the opposed application con- amendment thereto made under Rule
tains a clear indication that the appli- 15, Federal Rules of Civil Procedure.
304
(2)(i) A defense attacking the validity tion, an opposition may not be amend-
of any one or more of the registrations ed to add to the goods or services op-
pleaded in the opposition shall be a posed.
compulsory counterclaim if grounds for (b) Pleadings in an opposition pro-
such counterclaim exist at the time ceeding against an application filed
when the answer is filed. If grounds for under section 66(a) of the Act may be
a counterclaim are known to the appli- amended in the same manner and to
cant when the answer to the opposition the same extent as in a civil action in
is filed, the counterclaim shall be a United States district court, except
pleaded with or as part of the answer. that, once filed, the opposition may
If grounds for a counterclaim are not be amended to add to the grounds
learned during the course of the opposi- for opposition or to add to the goods or
tion proceeding, the counterclaim shall services subject to opposition.
be pleaded promptly after the grounds
[68 FR 55766, Sept. 26, 2003]
therefor are learned. A counterclaim
need not be filed if it is the subject of CANCELLATION
another proceeding between the same
parties or anyone in privity therewith. AUTHORITY: Secs. 2.111 to 2.114 also issued
(ii) An attack on the validity of a under secs. 14, 17, 24, 60 Stat. 433, 434, 436; 15
registration pleaded by an opposer will U.S.C. 1064, 1067, 1092.
not be heard unless a counterclaim or
separate petition is filed to seek the § 2.111 Filing petition for cancellation.
cancellation of such registration. (a) A cancellation proceeding is com-
(iii) The provisions of §§ 2.111 through menced by filing in the Office a timely
2.115, inclusive, shall be applicable to petition for cancellation with the re-
counterclaims. A time, not less than quired fee. The petition must include
thirty days, will be designated within proof of service on the owner of record
which an answer to the counterclaim for the registration, or the owner’s do-
must be filed. mestic representative of record, at the
(iv) The times for pleading, dis- correspondence address of record in the
covery, testimony, briefs or oral argu- Office, as detailed in §§ 2.111(b) and
ment will be reset or extended when 2.119.
necessary, upon motion by a party, to (b) Any person who believes that he,
enable a party fully to present or meet she or it is or will be damaged by a reg-
a counterclaim or separate petition for istration may file a petition, addressed
cancellation of a registration. to the Trademark Trial and Appeal
(c) The opposition may be withdrawn Board, for cancellation of the registra-
without prejudice before the answer is tion in whole or in part. Petitioner
filed. After the answer is filed, the op- must serve a copy of the petition, in-
position may not be withdrawn with- cluding any exhibits, on the owner of
out prejudice except with the written record for the registration, or on the
consent of the applicant or the appli- owner’s domestic representative of
cant’s attorney or other authorized record, if one has been appointed, at
representative. the correspondence address of record in
[30 FR 13193, Oct. 16, 1965, as amended at 46 the Office. The petitioner must include
FR 6940, Jan. 22, 1981; 48 FR 23136, May 23, with the petition for cancellation proof
1983; 54 FR 34897, Aug. 22, 1989] of service, pursuant to § 2.119, on the
owner of record, or on the owner’s do-
§ 2.107 Amendment of pleadings in an mestic representative of record, if one
opposition proceeding. has been appointed, at the correspond-
(a) Pleadings in an opposition pro- ence address of record in the Office. If
ceeding against an application filed any service copy of the petition for
under section 1 or 44 of the Act may be cancellation is returned to the peti-
amended in the same manner and to tioner as undeliverable, the petitioner
the same extent as in a civil action in must notify the Board within ten days
a United States district court, except of receipt of the returned copy. The pe-
that, after the close of the time period tition for cancellation need not be
for filing an opposition including any verified, but must be signed by the pe-
extension of time for filing an opposi- titioner or the petitioner’s attorney, as
305
§ 2.112 37 CFR Ch. I (7–1–16 Edition)
specified in § 11.1 of this chapter, or for which sufficient fees have been sub-
other authorized representative, as mitted.
specified in § 11.14(b) of this chapter. (iii) If persons are joined as party pe-
Electronic signatures pursuant to titioners, each must submit a fee for
§ 2.193(c) are required for petitions sub- each class for which cancellation is
mitted electronically via ESTTA. The sought. If the fees submitted are suffi-
petition for cancellation may be filed cient to pay for one person to petition
at any time in the case of registrations for cancellation of the registration in
on the Supplemental Register or under at least one class but are insufficient
the Act of 1920, or registrations under for each named party petitioner, the
the Act of 1881 or the Act of 1905 which first-named party will be presumed to
have not been published under section be the party petitioner. Additional par-
12(c) of the Act, or on any ground spec- ties will be deemed to be party peti-
ified in section 14(3) or (5) of the Act. In tioners only to the extent that the fees
all other cases, the petition for can- submitted are sufficient to pay the fee
cellation and the required fee must be due for each party petitioner. If per-
filed within five years from the date of sons are joined as party petitioners
registration of the mark under the Act against a multiple class registration,
or from the date of publication under the fees submitted are insufficient, and
section 12(c) of the Act. no specification of parties and classes
(c)(1) The petition for cancellation is made at the time the party is joined,
must be accompanied by the required the fees submitted will be applied first
fee for each party joined as petitioner on behalf of the first-named petitioner
for each class in the registration for against as many of the classes in the
which cancellation is sought (see § 2.6). registration as the submitted fees are
(2) An otherwise timely petition for sufficient to pay. Any excess will be ap-
cancellation will not be accepted via plied on behalf of the second-named
ESTTA unless the petition for can- party to the cancellation against the
cellation is accompanied by a fee that classes in the registration in ascending
is sufficient to pay in full for each numerical order.
named party petitioner to petition for (4) The filing date of a petition for
cancellation of the registration of a cancellation is the date of receipt in
mark in each class specified in the pe- the Office of the petition for cancella-
tition for cancellation. tion, with proof of service on the owner
(3) If an otherwise timely petition for of record, or on the owner’s domestic
cancellation is submitted on paper, the representative, if one has been ap-
following is applicable if less than all pointed, at the correspondence address
required fees are submitted: of record in the Office, and with the re-
(i) If the petition for cancellation is quired fee, unless the petition is filed
accompanied by no fee or a fee insuffi- in accordance with § 2.198.
cient to pay for one person to petition [68 FR 55766, Sept. 26, 2003, as amended at 72
for cancellation against at least one FR 42258, Aug. 1, 2007; 73 FR 47686, Aug. 14,
class in the registration, the petition 2008; 74 FR 54909, Oct. 26, 2009]
for cancellation will be refused.
(ii) If the petition for cancellation is § 2.112 Contents of petition for can-
accompanied by fees sufficient to pay cellation.
for one person to petition for cancella- (a) The petition for cancellation
tion against at least one class in the must set forth a short and plain state-
registration, but fees are insufficient ment showing why the petitioner be-
for a petition for cancellation against lieves he, she or it is or will be dam-
all the classes in the registration, and aged by the registration, state the
the particular class or classes against ground for cancellation, and indicate,
which the petition for cancellation is to the best of petitioner’s knowledge,
filed is not specified, the petition for the name and address of the current
cancellation will be presumed to be owner of the registration.
against the class or classes in ascend- (b) When appropriate, petitions for
ing numerical order, including only the cancellation of different registrations

number of classes in the registration owned by the same party may be joined
306
in a consolidated petition for cancella- istration(s) sought to be cancelled, ex-

tion. The required fee must be included cept that the Board, in its discretion,
for each party joined as a petitioner for may join or substitute as respondent a
each class sought to be cancelled in party who makes a showing of a cur-
each registration against which the pe- rent ownership interest in such reg-
tition for cancellation is filed. istration(s).
[68 FR 55767, Sept. 26, 2003]
(d) When the party alleged by the pe-
titioner, pursuant to § 2.112(a), as the
§ 2.113 Notification to parties of can- current owner of the registration(s) is
cellation proceeding. not the record owner, a courtesy copy
(a) When a petition for cancellation of the petition for cancellation shall be
in proper form (see §§ 2.111 and 2.112), forwarded with a copy of the notifica-
with proof of service in accordance tion to the alleged current owner. The
with § 2.111(b), has been filed and the alleged current owner may file a mo-
correct fee has been submitted, the tion to be joined or substituted as re-
Trademark Trial and Appeal Board spondent.
shall prepare a notification which shall [68 FR 55767, Sept. 26, 2003, as amended at 72
identify the title and number of the FR 42259, Aug. 1, 2007; 73 FR 47686, Aug. 14,
proceeding and the registration(s) in- 2008]
volved and shall designate a time, not
§ 2.114 Answer.
less than thirty days from the mailing
date of the notification, within which (a) If no answer is filed within the
an answer must be filed. If a party has time set, the petition may be decided
provided the Office with an e-mail ad- as in case of default.
dress, the notification may be trans- (b)(1) An answer shall state in short
mitted via e-mail. and plain terms the respondent’s de-
(b) The Board shall forward a copy of fenses to each claim asserted and shall
the notification to petitioner, as fol- admit or deny the averments upon
lows: which the petitioner relies. If the re-
(1) If the petition for cancellation is spondent is without knowledge or in-
transmitted by an attorney, or a writ- formation sufficient to form a belief as
ten power of attorney is filed, the to the truth of an averment, respond-
Board will send the notification to the ent shall so state and this will have the
attorney transmitting the petition for effect of a denial. Denials may take
cancellation or to the attorney des- any of the forms specified in Rule 8(b)
ignated in the power of attorney, proof the Federal Rules of Civil Procedure.
vided that person is an ‘‘attorney’’ as An answer may contain any defense,
defined in § 11.1 of this chapter. including the affirmative defenses of
(2) If petitioner is not represented by unclean hands, laches, estoppel, acqui-
an attorney in the cancellation pro- escence, fraud, mistake, prior judg-
ceeding, but petitioner has appointed a ment, or any other matter constituting
domestic representative, the Board will an avoidance or affirmative defense.
send the notification to the domestic When pleading special matters, the
representative, unless petitioner des- Federal Rules of Civil Procedure shall
ignates in writing another correspond- be followed. A reply to an affirmative
ence address. defense need not be filed. When a de-
(3) If petitioner is not represented by fense attacks the validity of a registra-
an attorney in the cancellation pro- tion pleaded in the petition, paragraph
ceeding, and no domestic representa- (b)(2) of this section shall govern. A
tive has been appointed, the Board will pleaded registration is a registration
send the notification directly to peti- identified by number and date of
tioner, unless petitioner designates in issuance in an original petition for can-
writing another correspondence ad- cellation or in any amendment thereto
dress. made under Rule 15, Federal Rules of
(c) The Board shall forward a copy of Civil Procedure.
the notification to the respondent (see (2)(i) A defense attacking the validity
§ 2.118). The respondent shall be the of any one or more of the registrations
party shown by the records of the Of- pleaded in the petition shall be a com-
fice to be the current owner of the reg- pulsory counterclaim if grounds for
307
§ 2.115 37 CFR Ch. I (7–1–16 Edition)
such counterclaim exist at the time § 2.116 Federal Rules of Civil Proce-
when the answer if filed. If grounds for dure.
a counterclaim are known to respond- (a) Except as otherwise provided, and
ent when the answer to the petition is wherever applicable and appropriate,
filed, the counterclaim shall be pleaded procedure and practice in inter partes
with or as part of the answer. If proceedings shall be governed by the
grounds for a counterclaim are learned Federal Rules of Civil Procedure.
during the course of the cancellation (b) The opposer in an opposition pro-
proceeding, the counterclaim shall be ceeding or the petitioner in a cancella-
pleaded promptly after the grounds tion proceeding shall be in the position
therefor are learned. A counterclaim of plaintiff, and the applicant in an op-
need not be filed if it is the subject of position proceeding or the respondent
another proceeding between the same in a cancellation proceeding shall be in
parties or anyone in privity therewith. the position of defendant. A party that
(ii) An attack on the validity of a is a junior party in an interference pro-
registration pleaded by a petitioner for ceeding or in a concurrent use registra-
cancellation will not be heard unless a tion proceeding shall be in the position
counterclaim or separate petition is of plaintiff against every party that is
filed to seek the cancellation of such senior, and the party that is a senior
registration. party in an interference proceeding or
(iii) The provisions of §§ 2.111 through in a concurrent use registration pro-
2.115, inclusive, shall be applicable to ceeding shall be a defendant against
counterclaims. A time, not less than every party that is junior.
thirty days, will be designated within (c) The opposition or the petition for
which an answer to the counterclaim cancellation and the answer correspond
must be filed. to the complaint and answer in a court
(iv) The times for pleading, dis- proceeding.
covery, testimony, briefs, or oral argu- (d) The assignment of testimony peri-
ment will be reset or extended when ods corresponds to setting a case for
necessary, upon motion by a party, to trial in court proceedings.
enable a party fully to present or meet (e) The taking of depositions during
a counterclaim or separate petition for the assigned testimony periods cor-
cancellation of a registration. responds to the trial in court pro-
(c) The petition for cancellation may ceedings.
be withdrawn without prejudice before (f) Oral hearing corresponds to oral
the answer is filed. After the answer is summation in court proceedings.
filed, the petition may not be with- (g) The Trademark Trial and Appeal
drawn without prejudice except with Board’s standard protective order is ap-
the written consent of the registrant or plicable during disclosure, discovery
the registrant’s attorney or other au- and at trial in all opposition, cancella-
thorized representative. tion, interference and concurrent use
[30 FR 13193, Oct. 16, 1965, as amended at 46 registration proceedings, unless the
FR 6940, Jan. 22, 1981; 46 FR 11548, Feb. 9, parties, by stipulation approved by the
1981; 51 FR 28710, Aug. 11, 1986; 54 FR 34898, Board, agree to an alternative order, or
Aug. 22, 1989] a motion by a party to use an alter-
native order is granted by the Board.
§ 2.115 Amendment of pleadings in a The standard protective order is avail-
cancellation proceeding. able at the Office’s Web site, or upon
Pleadings in a cancellation pro- request, a copy will be provided. No
ceeding may be amended in the same material disclosed or produced by a
manner and to the same extent as in a party, presented at trial, or filed with
civil action in a United States district the Board, including motions or briefs
court. which discuss such material, shall be
[48 FR 23136, May 23, 1983] treated as confidential or shielded from
public view unless designated as pro-
PROCEDURE IN Inter Partes PROCEEDINGS tected under the Board’s standard pro-
tective order, or under an alternative
AUTHORITY: Secs. 2.116 to 2.136 also issued order stipulated to by the parties and
under sec. 17, 60 Stat. 434; 15 U.S.C. 1067. approved by the Board, or under an
308
order submitted by motion of a party the party if there is no attorney or

granted by the Board. other authorized representative, and
[30 FR 13193, Oct. 16, 1965. Redesignated and
may be made in any of the following
amended at 37 FR 7606, Apr. 18, 1972; 48 FR ways:
23136, May 23, 1983; 72 FR 42259, Aug. 1, 2007] (1) By delivering a copy of the paper
to the person served;
§ 2.117 Suspension of proceedings. (2) By leaving a copy at the usual
(a) Whenever it shall come to the at- place of business of the person served,
tention of the Trademark Trial and Ap- with someone in the person’s employ-
peal Board that a party or parties to a ment;
pending case are engaged in a civil ac- (3) When the person served has no
tion or another Board proceeding usual place of business, by leaving a
which may have a bearing on the case, copy at the person’s residence, with a
proceedings before the Board may be member of the person’s family over 14
suspended until termination of the years of age and of discretion;
civil action or the other Board pro- (4) Transmission by the Priority Mail
ceeding. Express® Post Office to Addressee serv-
(b) Whenever there is pending before ice of the United States Postal Service
the Board both a motion to suspend or by first-class mail, which may also
and a motion which is potentially dis- be certified or registered;
positive of the case, the potentially (5) Transmission by overnight cou-
dispositive motion may be decided be- rier.
fore the question of suspension is con- Whenever it shall be satisfactorily
sidered regardless of the order in which shown to the Director that none of the
the motions were filed. above modes of obtaining service or
(c) Proceedings may also be sus- serving the paper is practicable, serv-
pended, for good cause, upon motion or ice may be by notice published in the
a stipulation of the parties approved by Official Gazette.
the Board. (6) Electronic transmission when mu-
tually agreed upon by the parties.
(c) When service is made by first-
FR 48097, Sept. 9, 1998]
class mail, Priority Mail Express®, or
§ 2.118 Undelivered Office notices. overnight courier, the date of mailing
or of delivery to the overnight courier
When a notice sent by the Office to
will be considered the date of service.
any registrant or applicant is returned
Whenever a party is required to take
to the Office undelivered, additional
some action within a prescribed period
notice may be given by publication in
after the service of a paper upon the
the Official Gazette for the period of
party by another party and the paper is
time prescribed by the Director.
served by first-class mail, Priority
[72 FR 42259, Aug. 1, 2007] Mail Express®, or overnight courier, 5
days shall be added to the prescribed
§ 2.119 Service and signing of papers. period.
(a) Every paper filed in the United (d) If a party to an inter partes pro-
States Patent and Trademark Office in ceeding is not domiciled in the United
inter partes cases, including notices of States and is not represented by an at-
appeal, must be served upon the other torney or other authorized representa-
parties. Proof of such service must be tive located in the United States, the
made before the paper will be consid- party may designate by document filed
ered by the Office. A statement signed in the United States Patent and Trade-
by the attorney or other authorized mark Office the name and address of a
representative, attached to or appear- person residing in the United States on
ing on the original paper when filed, whom may be served notices or process
clearly stating the date and manner in in the proceeding. If the party has ap-
which service was made will be accept- pointed a domestic representative, offi-
ed as prima facie proof of service. cial communications of the United
(b) Service of papers must be on the States Patent and Trademark Office
attorney or other authorized represent- will be addressed to the domestic rep-

ative of the party if there be such or on resentative unless the proceeding is
309
§ 2.120 37 CFR Ch. I (7–1–16 Edition)
being prosecuted by an attorney at law opening and closing dates for the tak-
or other qualified person duly author- ing of discovery, and the deadlines
ized under § 11.14(c) of this subchapter. within the discovery period for making
If the party has not appointed a domes- initial disclosures and expert disclo-
tic representative and the proceeding is sure. The trial order setting these
not being prosecuted by an attorney at deadlines and dates will be included
law or other qualified person, the Of- with the notice of institution of the
fice will send correspondence directly proceeding.
to the party, unless the party des- (2) The discovery conference shall
ignates in writing another address to occur no later than the opening of the
which correspondence is to be sent. The discovery period, and the parties must
mere designation of a domestic rep- discuss the subjects set forth in Fed-
resentative does not authorize the per- eral Rule of Civil Procedure 26(f) and
son designated to prosecute the pro- any subjects set forth in the Board’s
ceeding unless qualified under § 11.14(a), institution order. A Board Interlocu-
or qualified under § 11.14(b) and author- tory Attorney or Administrative
ized under § 2.17(f). Trademark Judge will participate in
(e) Every paper filed in an inter partes the conference upon request of any
proceeding, and every request for an party made after answer but no later
extension of time to file an opposition, than ten days prior to the deadline for
must be signed by the party filing it, or the conference. The participating at-
by the party’s attorney or other au- torney or judge may expand or reduce
thorized representative, but an un- the number or nature of subjects to be
signed paper will not be refused consid- discussed in the conference as may be
eration if a signed copy is submitted to deemed appropriate. The discovery pe-
the Patent and Trademark Office with- riod will be set for a period of 180 days.
in the time limit set in the notification Initial disclosures must be made no
of this defect by the Office. later than thirty days after the open-
ing of the discovery period. Disclosure
[37 FR 7606, Apr. 18, 1972, as amended at 41
FR 760, Jan. 5, 1976; 54 FR 34898, Aug. 22, 1989; of expert testimony must occur in the
54 FR 38041, Sept. 14, 1989; 63 FR 48097, Sept. manner and sequence provided in Fed-
9, 1998; 67 FR 79523, Dec. 30, 2002; 72 FR 42259, eral Rule of Civil Procedure 26(a)(2),
Aug. 1, 2007; 73 FR 47686, Aug. 14, 2008; 74 FR unless alternate directions have been
54909, Oct. 26, 2009; 79 FR 63039, Oct. 22, 2014] provided by the Board in an institution
order or any subsequent order resetting
§ 2.120 Discovery. disclosure, discovery or trial dates. If
(a) In general. (1) Wherever appro- the expert is retained after the dead-
priate, the provisions of the Federal line for disclosure of expert testimony,
Rules of Civil Procedure relating to the party must promptly file a motion
disclosure and discovery shall apply in for leave to use expert testimony. Upon
opposition, cancellation, interference disclosure by any party of plans to use
and concurrent use registration pro- expert testimony, whether before or
ceedings except as otherwise provided after the deadline for disclosing expert
in this section. The provisions of Fed- testimony, the Board may issue an
eral Rule of Civil Procedure 26 relating order regarding expert discovery and/or
to required disclosures, the conference set a deadline for any other party to
of the parties to discuss settlement and disclose plans to use a rebuttal expert.
to develop a disclosure and discovery The parties may stipulate to a short-
plan, the scope, timing and sequence of ening of the discovery period. The dis-
discovery, protective orders, signing of covery period may be extended upon
disclosures and discovery responses, stipulation of the parties approved by
and supplementation of disclosures and the Board, or upon motion granted by
discovery responses, are applicable to the Board, or by order of the Board. If
Board proceedings in modified form, as a motion for an extension is denied, the
noted in these rules and as may be de- discovery period may remain as origi-
tailed in any order instituting an inter nally set or as reset. Disclosure dead-
partes proceeding or subsequent sched- lines and obligations may be modified
uling order. The Board will specify the upon written stipulation of the parties
deadline for a discovery conference, the approved by the Board, or upon motion
310
granted by the Board, or by order of son designated under Rule 30(b)(6) or

the Board. If a stipulation or motion Rule 31(a) of the Federal Rules of Civil
for modification is denied, disclosure Procedure. See 35 U.S.C. 24.
deadlines may remain as originally set (c) Discovery deposition in foreign
or reset and obligations may remain countries. (1) The discovery deposition
unaltered. The parties are not required of a natural person residing in a for-
to prepare or transmit to the Board a eign country who is a party or who, at
written report outlining their dis- the time set for the taking of the depo-
covery conference discussions, unless sition, is an officer, director, or man-
the parties have agreed to alter disclo- aging agent of a party, or a person des-
sure or discovery obligations set forth ignated under Rule 30(b)(6) or Rule
by these rules or applicable Federal 31(a) of the Federal Rules of Civil Pro-
Rules of Civil Procedure, or unless di-
cedure, shall, if taken in a foreign
rected to file such a report by a partici-
country, be taken in the manner pre-
pating Board Interlocutory Attorney
scribed by § 2.124 unless the Trademark
or Administrative Trademark Judge.
(3) A party must make its initial dis- Trial and Appeal Board, upon motion
closures prior to seeking discovery, ab- for good cause, orders or the parties
sent modification of this requirement stipulate, that the deposition be taken
by a stipulation of the parties approved by oral examination.
by the Board, or a motion granted by (2) Whenever a foreign party is or
the Board, or by order of the Board. will be, during a time set for discovery,
Discovery depositions must be taken, present within the United States or
and interrogatories, requests for pro- any territory which is under the con-
duction of documents and things, and trol and jurisdiction of the United
requests for admission must be served, States, such party may be deposed by
on or before the closing date of the dis- oral examination upon notice by the
covery period as originally set or as party seeking discovery. Whenever a
reset. Responses to interrogatories, re- foreign party has or will have, during a
quests for production of documents and time set for discovery, an officer, direc-
things, and requests for admission tor, managing agent, or other person
must be served within thirty days from who consents to testify on its behalf,
the date of service of such discovery represent within the United States or
quests. The time to respond may be ex- any territory which is under the con-
tended upon stipulation of the parties, trol and jurisdiction of the United
or upon motion granted by the Board, States, such officer, director, managing
or by order of the Board. The resetting agent, or other person who consents to
of a party’s time to respond to an out- testify in its behalf may be deposed by
standing request for discovery will not oral examination upon notice by the
result in the automatic rescheduling of party seeking discovery. The party
the discovery and/or testimony periods; seeking discovery may have one or
such dates will be rescheduled only
more officers, directors, managing
upon stipulation of the parties ap-
agents, or other persons who consent to
proved by the Board, or upon motion
testify on behalf of the adverse party,
granted by the Board, or by order of
the Board. designated under Rule 30(b)(6) of the
(b) Discovery deposition within the Federal Rules of Civil Procedure. The
United States. The deposition of a nat- deposition of a person under this para-
ural person shall be taken in the Fed- graph shall be taken in the Federal ju-
eral judicial district where the person dicial district where the witness re-
resides or is regularly employed or at sides or is regularly employed, or, if
any place on which the parties agree by the witness neither resides nor is regu-
stipulation. The responsibility rests larly employed in a Federal judicial
wholly with the party taking discovery district, where the witness is at the
to secure the attendance of a proposed time of the deposition. This paragraph
deponent other than a party or anyone does not preclude the taking of a dis-
who, at the time set for the taking of covery deposition of a foreign party by
the deposition, is an officer, director, any other procedure provided by para-

or managing agent of a party, or a per- graph (c)(1) of this section.
311
§ 2.120 37 CFR Ch. I (7–1–16 Edition)
(d) Interrogatories; request for produc- pounded in a discovery deposition, or

tion. (1) The total number of written in- any interrogatory, or fails to produce
terrogatories which a party may serve and permit the inspection and copying
upon another party pursuant to Rule 33 of any document or thing, the party
of the Federal Rules of Civil Procedure, entitled to disclosure or seeking dis-
in a proceeding, shall not exceed sev- covery may file a motion to compel
enty-five, counting subparts, except disclosure, a designation, or attend-
that the Trademark Trial and Appeal ance at a deposition, or an answer, or
Board, in its discretion, may allow ad- production and an opportunity to in-
ditional interrogatories upon motion spect and copy. A motion to compel
therefor showing good cause, or upon initial disclosures or expert testimony
stipulation of the parties, approved by disclosure must be filed prior to the
the Board. A motion for leave to serve close of the discovery period. A motion
additional interrogatories must be to compel discovery must be filed prior
filed and granted prior to the service of to the commencement of the first tes-
the proposed additional interrogatories timony period as originally set or as
and must be accompanied by a copy of reset. A motion to compel discovery
the interrogatories, if any, which have shall include a copy of the request for
already been served by the moving designation or of the relevant portion
party, and by a copy of the interrog- of the discovery deposition; or a copy
atories proposed to be served. If a party of the interrogatory with any answer
upon which interrogatories have been or objection that was made; or a copy
served believes that the number of in- of the request for production, any prof-
terrogatories exceeds the limitation fer of production or objection to pro-
specified in this paragraph, and is not duction in response to the request, and
willing to waive this basis for objec- a list and brief description of the docu-
tion, the party shall, within the time ments or things that were not produced
for (and instead of) serving answers and for inspection and copying. A motion
specific objections to the interrog- to compel initial disclosures, expert
atories, serve a general objection on testimony disclosure, or discovery
the ground of their excessive number. must be supported by a written state-
If the inquiring party, in turn, files a ment from the moving party that such
motion to compel discovery, the mo- party or the attorney therefor has
tion must be accompanied by a copy of made a good faith effort, by conference
the set(s) of the interrogatories which or correspondence, to resolve with the
together are said to exceed the limita- other party or the attorney therefor
tion, and must otherwise comply with the issues presented in the motion but
the requirements of paragraph (e) of the parties were unable to resolve their
this section. differences. If issues raised in the mo-
(2) The production of documents and tion are subsequently resolved by
things under the provisions of Rule 34 agreement of the parties, the moving
of the Federal Rules of Civil Procedure party should inform the Board in writ-
will be made at the place where the ing of the issues in the motion which
documents and things are usually kept, no longer require adjudication.
or where the parties agree, or where (2) When a party files a motion for an
and in the manner which the Trade- order to compel initial disclosures, ex-
mark Trial and Appeal Board, upon pert testimony disclosure, or dis-
motion, orders. covery, the case will be suspended by
(e) Motion for an order to compel disclo- the Board with respect to all matters
sure or discovery. (1) If a party fails to not germane to the motion. After the
make required initial disclosures or ex- motion is filed and served, no party
pert testimony disclosure, or fails to should file any paper that is not ger-
designate a person pursuant to Rule mane to the motion, except as other-
30(b)(6) or Rule 31(a) of the Federal wise specified in the Board’s suspension
Rules of Civil Procedure, or if a party, order. Nor may any party serve any ad-
or such designated person, or an offi- ditional discovery until the period of
cer, director or managing agent of a suspension is lifted or expires by or
party fails to attend a deposition or under order of the Board. The filing of
fails to answer any question pro- a motion to compel any disclosure or
312
discovery shall not toll the time for a the Board may make any appropriate
party to comply with any disclosure re- order, as specified in paragraph (g)(1) of
quirement or to respond to any out- this section. If a party, or an officer,
standing discovery requests or to ap- director, or managing agent of a party,
pear for any noticed discovery deposi- or a person designated under Rule
tion. 30(b)(6) or 31(a) of the Federal Rules of
(f) Motion for a protective order. Upon Civil Procedure to testify on behalf of
motion by a party obligated to make a party, fails to attend the party’s or
initial disclosures or expert testimony person’s discovery deposition, after
disclosure or from whom discovery is being served with proper notice, or
sought, and for good cause, the Trade- fails to provide any response to a set of
mark Trial and Appeal Board may interrogatories or to a set of requests
make any order which justice requires for production of documents and
to protect a party from annoyance, em-
things, and such party or the party’s
barrassment, oppression, or undue bur-
attorney or other authorized represent-
den or expense, including one or more
ative informs the party seeking dis-
of the types of orders provided by
covery that no response will be made
clauses (1) through (8), inclusive, of
Rule 26(c) of the Federal Rules of Civil thereto, the Board may make any ap-
Procedure. If the motion for a protec- propriate order, as specified in para-
tive order is denied in whole or in part, graph (g)(1) of this section.
the Board may, on such conditions (h)(1) Any motion by a party to de-
(other than an award of expenses to the termine the sufficiency of an answer or
party prevailing on the motion) as are objection to a request made by that
just, order that any party comply with party for an admission must be filed
disclosure obligations or provide or prior to the commencement of the first
permit discovery. testimony period, as originally set or
(g) Sanctions. (1) If a party fails to as reset. The motion shall include a
participate in the required discovery copy of the request for admission and
conference, or if a party fails to comply any exhibits thereto and of the answer
with an order of the Trademark Trial or objection. The motion must be sup-
and Appeal Board relating to disclosure ported by a written statement from the
or discovery, including a protective moving party that such party or the
order, the Board may make any appro- attorney therefor has made a good
priate order, including those provided faith effort, by conference or cor-
in Rule 37(b)(2) of the Federal Rules of respondence, to resolve with the other
Civil Procedure, except that the Board party or the attorney therefor the
will not hold any person in contempt issues presented in the motion and has
or award expenses to any party. The been unable to reach agreement. If
Board may impose against a party any issues raised in the motion are subse-
of the sanctions provided in Rule quently resolved by agreement of the
37(b)(2) in the event that said party or parties, the moving party should in-
any attorney, agent, or designated wit-
form the Board in writing of the issues
ness of that party fails to comply with
in the motion which no longer require
a protective order made pursuant to
adjudication.
Rule 26(c) of the Federal Rules of Civil
Procedure. A motion for sanctions (2) When a party files a motion to de-
against a party for its failure to par- termine the sufficiency of an answer or
ticipate in the required discovery con- objection to a request for an admission,
ference must be filed prior to the dead- the case will be suspended by the Board
line for any party to make initial dis- with respect to all matters not ger-
closures. mane to the motion. After filing and
(2) If a party fails to make required service of the motion, no party should
initial disclosures or expert testimony file any paper that is not germane to
disclosure, and such party or the par- the motion, except as otherwise speci-
ty’s attorney or other authorized rep- fied in the Board’s suspension order.
resentative informs the party or par- Nor may any party thereafter serve
ties entitled to receive disclosures that any additional discovery until the pe-
required disclosures will not be made, riod of suspension is lifted or expires
313
§ 2.120 37 CFR Ch. I (7–1–16 Edition)
by or under order of the Board. The fil- dead; or out of the United States (un-
ing of a motion to determine the suffi- less it appears that the absence of the
ciency of an answer or objection to a witness was procured by the party of-
request for admission shall not toll the fering the deposition); or unable to tes-
time for a party to comply with any tify because of age, illness, infirmity,
disclosure requirement or to respond to or imprisonment; or cannot be served
any outstanding discovery requests or with a subpoena to compel attendance
to appear for any noticed discovery at a testimonial deposition; or there is
deposition. a stipulation by the parties; or upon a
(i) Telephone and pretrial conferences. showing that such exceptional cir-
(1) Whenever it appears to the Trade- cumstances exist as to make it desir-
mark Trial and Appeal Board that a able, in the interest of justice, to allow
stipulation or motion filed in an inter the deposition to be used. The use of a
partes proceeding is of such nature that discovery deposition by any party
its approval or resolution by cor- under this paragraph will be allowed
respondence is not practical, the Board only by stipulation of the parties ap-
may, upon its own initiative or upon proved by the Trademark Trial and Ap-
request made by one or both of the par- peal Board, or by order of the Board on
ties, address the stipulation or resolve motion, which shall be filed at the time
the motion by telephone conference. of the purported offer of the deposition
(2) Whenever it appears to the Trade- in evidence, unless the motion is based
mark Trial and Appeal Board that upon a claim that such exceptional cir-
questions or issues arising during the cumstances exist as to make it desir-
interlocutory phase of an inter partes able, in the interest of justice, to allow
proceeding have become so complex the deposition to be used, in which case
that their resolution by correspond- the motion shall be filed promptly
ence or telephone conference is not after the circumstances claimed to jus-
practical and that resolution would tify use of the deposition became
likely be facilitated by a conference in known.
person of the parties or their attorneys (3)(i) A discovery deposition, an an-
with an Administrative Trademark swer to an interrogatory, an admission
Judge or an Interlocutory Attorney of to a request for admission, or a written
the Board, the Board may, upon its disclosure (but not a disclosed docu-
own initiative or upon motion made by ment), which may be offered in evi-
one or both of the parties, request that dence under the provisions of para-
the parties or their attorneys, under graph (j) of this section, may be made
circumstances which will not result in of record in the case by filing the depo-
undue hardship for any party, meet sition or any part thereof with any ex-
with the Board at its offices for a dis- hibit to the part that is filed, or a copy
closure, discovery or pretrial con- of the interrogatory and answer there-
ference. to with any exhibit made part of the
(j) Use of discovery deposition, answer answer, or a copy of the request for ad-
to interrogatory, admission or written dis- mission and any exhibit thereto and
closure. (1) The discovery deposition of the admission (or a statement that the
a party or of anyone who at the time of party from which an admission was re-
taking the deposition was on officer, quested failed to respond thereto), or a
director or managing agent of a party, copy of the written disclosure, together
or a person designated by a party pur- with a notice of reliance. The notice of
suant to Rule 30(b)(6) or Rule 31(a) of reliance and the material submitted
the Federal Rules of Civil Procedure, thereunder should be filed during the
may be offered in evidence by an ad- testimony period of the party that files
verse party. the notice of reliance. An objection
(2) Except as provided in paragraph made at a discovery deposition by a
(j)(1) of this section, the discovery dep- party answering a question subject to
osition of a witness, whether or not a the objection will be considered at
party, shall not be offered in evidence final hearing.
unless the person whose deposition was (ii) A party that has obtained docu-
taken is, during the testimony period ments from another party through dis-
of the party offering the deposition, closure or under Rule 34 of the Federal
314
Rules of Civil Procedure may not make (7) When a written disclosure, a dis-
the documents of record by notice of covery deposition, or a part thereof, or
reliance alone, except to the extent an answer to an interrogatory, or an
that they are admissible by notice of admission, has been made of record by
reliance under the provisions of one party in accordance with the provi-
§ 2.122(e). sions of paragraph (j)(3) of this section,
(4) If only part of a discovery deposi- it may be referred to by any party for
tion is submitted and made part of the any purpose permitted by the Federal
record by a party, an adverse party Rules of Evidence.
may introduce under a notice of reli- (8) Written disclosures or disclosed
ance any other part of the deposition documents, requests for discovery, re-
which should in fairness be considered sponses thereto, and materials or depo-
so as to make not misleading what was sitions obtained through the disclosure
offered by the submitting party. A no- or discovery process should not be filed
tice of reliance filed by an adverse with the Board, except when submitted
party must be supported by a written with a motion relating to disclosure or
statement explaining why the adverse discovery, or in support of or in re-
party needs to rely upon each addi- sponse to a motion for summary judg-
tional part listed in the adverse party’s ment, or under a notice of reliance,
notice, failing which the Board, in its when permitted, during a party’s testi-
discretion, may refuse to consider the mony period.
additional parts. [48 FR 23136, May 23, 1983, as amended at 54
(5) Written disclosures, an answer to FR 34898, Aug. 22, 1989; 54 FR 38041, Sept. 14,
an interrogatory, or an admission to a 1989; 56 FR 46379, Sept. 12, 1991; 56 FR 54917,
request for admission, may be sub- Oct. 23, 1991; 63 FR 48098, Sept. 9, 1998; 63 FR
mitted and made part of the record 52159, Sept. 30, 1998; 72 FR 42259, Aug. 1, 2007]
only by the receiving or inquiring
party except that, if fewer than all of § 2.121 Assignment of times for taking
the written disclosures, answers to in- testimony.
terrogatories, or fewer than all of the (a) The Trademark Trial and Appeal
admissions, are offered in evidence by Board will issue a trial order setting a
the receiving or inquiring party, the deadline for each party’s required pre-
disclosing or responding party may in- trial disclosures and assigning to each
troduce under a notice of reliance any party its time for taking testimony. No
other written disclosures, answers to testimony shall be taken except during
interrogatories, or any other admis- the times assigned, unless by stipula-
sions, which should in fairness be con- tion of the parties approved by the
sidered so as to make not misleading Board, or upon motion granted by the
what was offered by the receiving or in- Board, or by order of the Board. The
quiring party. The notice of reliance deadlines for pretrial disclosures and
filed by the disclosing or responding the testimony periods may be resched-
party must be supported by a written uled by stipulation of the parties ap-
statement explaining why the dis- proved by the Board, or upon motion
closing or responding party needs to granted by the Board, or by order of
rely upon each of the additional writ- the Board. If a motion to reschedule
ten disclosures or discovery responses any pretrial disclosure deadline and/or
listed in the disclosing or responding testimony period is denied, the pretrial
party’s notice, and absent such state- disclosure deadline or testimony period
ment the Board, in its discretion, may and any subsequent remaining periods
refuse to consider the additional writ- may remain as set. The resetting of the
ten disclosures or responses. closing date for discovery will result in
(6) Paragraph (j) of this section will the rescheduling of pretrial disclosure
not be interpreted to preclude reading deadlines and testimony periods with-
or use of written disclosures or docu- out action by any party.
ments, a discovery deposition, or an- (b)(1) The Trademark Trial and Ap-
swer to an interrogatory, or admission peal Board will schedule a testimony
as part of the examination or cross-ex- period for the plaintiff to present its
amination of any witness during the case in chief, a testimony period for
testimony period of any party. the defendant to present its case and to
315
§ 2.122 37 CFR Ch. I (7–1–16 Edition)
meet the case of the plaintiff, and a each witness from whom it intends to
testimony period for the plaintiff to take testimony, or may take testi-
present evidence in rebuttal. mony if the need arises, general identi-
(2) When there is a counterclaim, or fying information about the witness,
when proceedings have been consoli- such as relationship to any party, in-
dated and one party is in the position cluding job title if employed by a
of plaintiff in one of the involved pro- party, or, if neither a party nor related
ceedings and in the position of defend- to a party, occupation and job title, a
ant in another of the involved pro- general summary or list of subjects on
ceedings, or when there is an inter- which the witness is expected to tes-
ference or a concurrent use registra- tify, and a general summary or list of
tion proceeding involving more than the types of documents and things
two parties, the Board will schedule which may be introduced as exhibits
testimony periods so that each party in during the testimony of the witness.
the position of plaintiff will have a pe- Pretrial disclosure of a witness under
riod for presenting its case in chief this subsection does not substitute for
against each party in the position of issuance of a proper notice of examina-
defendant, each party in the position of tion under § 2.123(c) or § 2.124(b). If a
defendant will have a period for pre- party does not plan to take testimony
senting its case and meeting the case from any witnesses, it must so state in
of each plaintiff, and each party in the its pretrial disclosure. When a party
position of plaintiff will have a period fails to make required pretrial disclo-
for presenting evidence in rebuttal. sures, any adverse party or parties may
(c) A testimony period which is sole- have remedy by way of a motion to the
ly for rebuttal will be set for fifteen Board to delay or reset any subsequent
days. All other testimony periods will pretrial disclosure deadlines and/or tes-
be set for thirty days. The periods may timony periods.
be extended by stipulation of the par- [48 FR 23138, May 23, 1983; 48 FR 27226, June
ties approved by the Trademark Trial 14, 1983, as amended at 54 FR 34899, Aug. 22,
and Appeal Board, or upon motion 1989; 63 FR 48099, Sept. 9, 1998; 68 FR 55767,
granted by the Board, or by order of Sept. 26, 2003; 72 FR 42262, Aug. 1, 2007]
the Board. If a motion for an extension
is denied, the testimony periods may § 2.122 Matters in evidence.
remain as set. (a) Rules of evidence. The rules of evi-
(d) When parties stipulate to the re- dence for proceedings before the Trade-
scheduling of a deadline for pretrial mark Trial and Appeal Board are the
disclosures and subsequent testimony Federal Rules of Evidence, the relevant
periods or to the rescheduling of the provisions of the Federal Rules of Civil
closing date for discovery and the re- Procedure, the relevant provisions of
scheduling of subsequent deadlines for Title 28 of the United States Code, and
pretrial disclosures and testimony peri- the provisions of this part of title 37 of
ods, a stipulation presented in the form the Code of Federal Regulations.
used in a trial order, signed by the par- (b) Application files. (1) The file of
ties, or a motion in said form signed by each application or registration speci-
one party and including a statement fied in a notice of interference, of each
that every other party has agreed application or registration specified in
thereto, shall be submitted to the the notice of a concurrent use registra-
Board. tion proceeding, of the application
(e) A party need not disclose, prior to against which a notice of opposition is
its testimony period, any notices of re- filed, or of each registration against
liance it intends to file during its testi- which a petition or counterclaim for
mony period. However, no later than cancellation is filed forms part of the
fifteen days prior to the opening of record of the proceeding without any
each testimony period, or on such al- action by the parties and reference
ternate schedule as may be provided by may be made to the file for any rel-
order of the Board, the party scheduled evant and competent purpose.
to present evidence must disclose the (2) The allegation in an application
name and, if not previously provided, for registration, or in a registration, of

the telephone number and address of a date of use is not evidence on behalf
316
of the applicant or registrant; a date of notice of reliance on the material

use of a mark must be established by being offered. The notice shall specify
competent evidence. Specimens in the the printed publication (including in-
file of an application for registration, formation sufficient to identify the
or in the file of a registration, are not source and the date of the publication)
evidence on behalf of the applicant or or the official record and the pages to
registrant unless identified and intro- be read; indicate generally the rel-
duced in evidence as exhibits during evance of the material being offered;
the period for the taking of testimony. and be accompanied by the official
(c) Exhibits to pleadings. Except as record or a copy thereof whose authen-
provided in paragraph (d)(1) of this sec- ticity is established under the Federal
tion, an exhibit attached to a pleading Rules of Evidence, or by the printed
is not evidence on behalf of the party publication or a copy of the relevant
to whose pleading the exhibit is at- portion thereof. A copy of an official
tached unless identified and introduced record of the Patent and Trademark
in evidence as an exhibit during the pe- Office need not be certified to be of-
riod for the taking of testimony. fered in evidence. The notice of reli-
(d) Registrations. (1) A registration of ance shall be filed during the testi-
the opposer or petitioner pleaded in an mony period of the party that files the
opposition or petition to cancel will be notice.
received in evidence and made part of (f) Testimony from other proceedings.
the record if the opposition or petition By order of the Trademark Trial and
is accompanied by an original or photo- Appeal Board, on motion, testimony
copy of the registration prepared and taken in another proceeding, or testi-
issued by the United States Patent and mony taken in a suit or action in a
Trademark Office showing both the court, between the same parties or
current status of and current title to those in privity may be used in a pro-
the registration, or by a current print- ceeding, so far as relevant and mate-
out of information from the electronic rial, subject, however, to the right of
database records of the USPTO show- any adverse party to recall or demand
ing the current status and title of the the recall for examination or cross-ex-
registration. For the cost of a copy of amination of any witness whose prior
a registration showing status and title, testimony has been offered and to
see § 2.6(b)(4). rebut the testimony.
(2) A registration owned by any party
to a proceeding may be made of record [48 FR 23138, May 23, 1983, as amended at 54
in the proceeding by that party by ap- FR 34899, Aug. 22, 1989; 54 FR 38041, Sept. 14,
propriate identification and introduc- 1989; 63 FR 48099, Sept. 9, 1998; 72 FR 42262,
tion during the taking of testimony or Aug. 1, 2007]
by filing a notice of reliance, which
§ 2.123 Trial testimony in inter partes
shall be accompanied by a copy (origi- cases.
nal or photocopy) of the registration
prepared and issued by the Patent and (a)(1) The testimony of witnesses in
Trademark Office showing both the inter partes cases may be taken by
current status of and current title to depositions upon oral examination as
the registration. The notice of reliance provided by this section or by deposi-
shall be filed during the testimony pe- tions upon written questions as pro-
riod of the party that files the notice. vided by § 2.124. If a party serves notice
(e) Printed publications and official of the taking of a testimonial deposi-
records. Printed publications, such as tion upon written questions of a wit-
books and periodicals, available to the ness who is, or will be at the time of
general public in libraries or of general the deposition, present within the
circulation among members of the pub- United States or any territory which is
lic or that segment of the public which under the control and jurisdiction of
is relevant under an issue in a pro- the United States, any adverse party
ceeding, and official records, if the pub- may, within fifteen days from the date
lication of official record is competent of service of the notice, file a motion
evidence and relevant to an issue, may with the Trademark Trial and Appeal
be introduced in evidence by filing a Board, for good cause, for an order that
317
§ 2.123 37 CFR Ch. I (7–1–16 Edition)
the deposition be taken by oral exam- before whom his deposition is to be

ination. taken.
(2) A testimonial deposition taken in (2) The deposition shall be taken in
a foreign country shall be taken by answer to questions, with the questions
deposition upon written questions as and answers recorded in their regular
provided by § 2.124, unless the Board, order by the officer, or by some other
upon motion for good cause, orders person (who shall be subject to the pro-
that the deposition be taken by oral visions of Rule 28 of the Federal Rules
examination, or the parties so stipu- of Civil Procedure) in the presence of
late. the officer except when the officer’s
(b) Stipulations. If the parties so stip- presence is waived on the record by
ulate in writing, depositions may be agreement of the parties. The testi-
taken before any person authorized to mony shall be taken stenographically
administer oaths, at any place, upon and transcribed, unless the parties
any notice, and in any manner, and present agree otherwise. In the absence
when so taken may be used like other of all opposing parties and their attor-
depositions. By written agreement of neys or other authorized representa-
the parties, the testimony of any wit- tives, depositions may be taken in
ness or witnesses of any party, may be longhand, typewriting, or stenographi-
submitted in the form of an affidavit cally. Exhibits which are marked and
by such witness or witnesses. The par- identified at the deposition will be
ties may stipulate in writing what a deemed to have been offered into evi-
particular witness would testify to if dence, without any formal offer there-
called, or the facts in the case of any of, unless the intention of the party
party may be stipulated in writing. marking the exhibits is clearly ex-
(c) Notice of examination of witnesses. pressed to the contrary.
Before the depositions of witnesses (3) Every adverse party shall have
shall be taken by a party, due notice in full opportunity to cross-examine each
writing shall be given to the opposing witness. If pretrial disclosures or the
party or parties, as provided in notice of examination of witnesses
§ 2.119(b), of the time when and place served pursuant to paragraph (c) of this
where the depositions will be taken, of section are improper or inadequate
the cause or matter in which they are with respect to any witness, an adverse
to be used, and the name and address of party may cross-examine that witness
each witness to be examined; if the under protest while reserving the right
name of a witness is not known, a gen- to object to the receipt of the testi-
eral description sufficient to identify mony in evidence. Promptly after the
the witness or the particular class or testimony is completed, the adverse
group to which the witness belongs, to- party, to preserve the objection, shall
gether with a satisfactory explanation, move to strike the testimony from the
may be given instead. Depositions may record, which motion will be decided
be noticed for any reasonable time and on the basis of all the relevant cir-
place in the United States. A deposi- cumstances. A motion to strike the
tion may not be noticed for a place in testimony of a witness for lack of prop-
a foreign country except as provided in er or adequate pretrial disclosure may
paragraph (a)(2) of this section. No seek exclusion of the entire testimony,
party shall take depositions in more when there was no pretrial disclosure,
than one place at the same time, nor so or may seek exclusion of that portion
nearly at the same time that reason- of the testimony that was not ade-
able opportunity for travel from one quately disclosed in accordance with
place of examination to the other is § 2.121(e). A motion to strike the testi-
not available. mony of a witness for lack of proper or
(d) Persons before whom depositions adequate notice of examination must
may be taken. Depositions may be taken request the exclusion of the entire tes-
before persons designated by Rule 28 of timony of that witness and not only a
the Federal Rules of Civil Procedure. part of that testimony.
(e) Examination of witnesses. (1) Each (4) All objections made at the time of
witness before testifying shall be duly the examination to the qualifications

sworn according to law by the officer of the officer taking the deposition, or
318
to the manner of taking it, or to the separate package marked and ad-
evidence presented, or to the conduct dressed as provided in this section.
of any party, and any other objection (g) Form of deposition. (1) The pages of
to the proceedings, shall be noted by each deposition must be numbered con-
the officer upon the deposition. Evi- secutively, and the name of the witness
dence objected to shall be taken sub- plainly and conspicuously written at
ject to the objections. the top of each page. A deposition must
(5) When the deposition has been be in written form. The questions pro-
transcribed, the deposition shall be pounded to each witness must be con-
carefully read over by the witness or secutively numbered unless the pages
by the officer to him, and shall then be have numbered lines. Each question
signed by the witness in the presence of must be followed by its answer.
any officer authorized to administer (2) Exhibits must be numbered or let-
oaths unless the reading and the signa- tered consecutively and each must be
ture be waived on the record by agree- marked with the number and title of
ment of all parties. the case and the name of the party of-
(f) Certification and filing of deposition. fering the exhibit. Entry and consider-
(1) The officer shall annex to the depo- ation may be refused to improperly
sition his certificate showing: marked exhibits.
(3) Each deposition must contain an
(i) Due administration of the oath by
index of the names of the witnesses,
the officer to the witness before the
giving the pages where their examina-
commencement of his deposition;
tion and cross-examination begin, and
(ii) The name of the person by whom an index of the exhibits, briefly de-
the deposition was taken down, and scribing their nature and giving the
whether, if not taken down by the offi- pages at which they are introduced and
cer, it was taken down in his presence; offered in evidence.
(iii) The presence or absence of the (h) Depositions must be filed. All depo-
adverse party; sitions which are taken must be duly
(iv) The place, day, and hour of com- filed in the Patent and Trademark Of-
mencing and taking the deposition; fice. On refusal to file, the Office at its
(v) The fact that the officer was not discretion will not further hear or con-
disqualified as specified in Rule 28 of sider the contestant with whom the re-
the Federal Rules of Civil Procedure. fusal lies; and the Office may, at its
(2) If any of the foregoing require- discretion, receive and consider a copy
ments in paragraph (f)(1) of this section of the withheld deposition, attested by
are waived, the certificate shall so such evidence as is procurable.
state. The officer shall sign the certifi- (i) Inspection of depositions. After the
cate and affix thereto his seal of office, depositions are filed in the Office, they
if he has such a seal. Unless waived on may be inspected by any party to the
the record by an agreement, he shall case, but they cannot be withdrawn for
then securely seal in an envelope all the purpose of printing. They may be
the evidence, notices, and paper exhib- printed by someone specially des-
its, inscribe upon the envelope a cer- ignated by the Office for that purpose,
tificate giving the number and title of under proper restrictions.
the case, the name of each witness, and (j) Effect of errors and irregularities in
the date of sealing. The officer or the depositions. Rule 32(d) (1), (2), and (3)
party taking the deposition, or its at- (A) and (B) of the Federal Rules of
torney or other authorized representa- Civil Procedure shall apply to errors
tive, shall then promptly forward the and irregularities in depositions. No-
package to the address set out in tice will not be taken of merely formal
§ 2.190. If the weight or bulk of an ex- or technical objections which shall not
hibit shall exclude it from the enve- appear to have wrought a substantial
lope, it shall, unless waived on the injury to the party raising them; and
record by agreement of all parties, be in case of such injury it must be made
authenticated by the officer and trans- to appear that the objection was raised
mitted by the officer or the party tak- at the time specified in said rule.
ing the deposition, or its attorney or (k) Objections to admissibility: Subject

other authorized representative, in a to the provisions of paragraph (j) of
319
§ 2.124 37 CFR Ch. I (7–1–16 Edition)
this section, objection may be made to vided by Rule 30(b)(6) of the Federal
receiving in evidence any deposition, Rules of Civil Procedure.
or part thereof, or any other evidence, (c) Every notice given under the pro-
for any reason which would require the visions of paragraph (b) of this section
exclusion of the evidence from consid- shall be accompanied by the name or
eration. Objections to the competency descriptive title of the officer before
of a witness or to the competency, rel- whom the deposition is to be taken.
evancy, or materiality of testimony (d)(1) Every notice served on any ad-
must be raised at the time specified in verse party under the provisions of
Rule 32(d)(3)(A) of the Federal Rules of paragraph (b) of this section shall be
Civil Procedure. Such objections will accompanied by the written questions
not be considered until final hearing. to be propounded on behalf of the party
(l) Evidence not considered. Evidence who proposes to take the deposition.
not obtained and filed in compliance Within twenty days from the date of
with these sections will not be consid- service of the notice, any adverse party
ered. may serve cross questions upon the
party who proposes to take the deposi-
[37 FR 7607, Apr. 18, 1972, as amended at 41 tion; any party who serves cross ques-
FR 760, Jan. 5, 1976; 48 FR 23139, May 23, 1983; tions shall also serve every other ad-
54 FR 34899, Aug. 22, 1989; 54 FR 38041, Sept.
verse party. Within ten days from the
14, 1989; 63 FR 48099, Sept. 9, 1998; 68 FR 14337,
Mar. 25, 2003; 68 FR 48289, Aug. 13, 2003; 68 FR
date of service of the cross questions,
55767, Sept. 26, 2003; 72 FR 42262, Aug. 1, 2007] the party who proposes to take the
deposition may serve redirect ques-
§ 2.124 Depositions upon written questions on every adverse party. Within
tions. ten days from the date of service of the
redirect questions, any party who
(a) A deposition upon written ques-
served cross questions may serve
tions may be taken before any person
recross questions upon the party who
before whom depositions may be taken
proposes to take the deposition; any
as provided by Rule 28 of the Federal
party who serves recross questions
Rules of Civil Procedure.
shall also serve every other adverse
(b)(1) A party desiring to take a testi- party. Written objections to questions
monial deposition upon written ques- may be served on a party propounding
tions shall serve notice thereof upon questions; any party who objects shall
each adverse party within ten days serve a copy of the objections on every
from the opening date of the testimony other adverse party. In response to ob-
period of the party who serves the no- jections, substitute questions may be
tice. The notice shall state the name served on the objecting party within
and address of the witness. A copy of ten days of the date of service of the
the notice, but not copies of the ques- objections; substitute questions shall
tions, shall be filed with the Trade- be served on every other adverse party.
mark Trial and Appeal Board. (2) Upon motion for good cause by
(2) A party desiring to take a dis- any party, or upon its own initiative,
covery deposition upon written ques- the Trademark Trial and Appeal Board
tions shall serve notice thereof upon may extend any of the time periods
each adverse party and shall file a copy provided by paragraph (d)(1) of this sec-
of the notice, but not copies of the tion. Upon receipt of written notice
questions, with the Board. The notice that one or more testimonial deposi-
shall state the name and address, if tions are to be taken upon written
known, of the person whose deposition questions, the Trademark Trial and
is to be taken. If the name of the per- Appeal Board shall suspend or resched-
son is not known, a general description ule other proceedings in the matter to
sufficient to identify him or the par- allow for the orderly completion of the
ticular class or group to which he be- depositions upon written questions.
longs shall be stated in the notice, and (e) Within ten days after the last
the party from whom the discovery date when questions, objections, or
deposition is to be taken shall des- substitute questions may be served, the
ignate one or more persons to be de- party who proposes to take the deposi-
posed in the same manner as is pro- tion shall mail a copy of the notice and
320
copies of all the questions to the officer enter judgment as by default against
designated in the notice; a copy of the the deposing party, or take any such
notice and of all the questions mailed other action as may be deemed appro-
to the officer shall be served on every priate.
adverse party. The officer designated in (b) The party who takes testimony is
the notice shall take the testimony of responsible for having all typo-
the witness in response to the ques- graphical errors in the transcript and
tions and shall record each answer im- all errors of arrangement, indexing and
mediately after the corresponding form of the transcript corrected, on no-
question. The officer shall then certify tice to each adverse party, prior to the
the transcript and mail the transcript filing of one certified transcript with
and exhibits to the party who took the the Trademark Trial and Appeal Board.
deposition. The party who takes testimony is re-
(f) The party who took the deposition sponsible for serving on each adverse
shall promptly serve a copy of the party one copy of the corrected tran-
transcript, copies of documentary ex- script or, if reasonably feasible, cor-
hibits, and duplicates or photographs rected pages to be inserted into the
of physical exhibits on every adverse transcript previously served.
party. It is the responsibility of the
(c) One certified transcript and ex-
party who takes the deposition to as-
hibits shall be filed with the Trade-
sure that the transcript is correct (see
mark Trial and Appeal Board. Notice of
§ 2.125(b)). If the deposition is a dis-
such filing shall be served on each ad-
covery deposition, it may be made of
verse party and a copy of each notice
record as provided by § 2.120(j). If the
shall be filed with the Board.
deposition is a testimonial deposition,
the original, together with copies of (d) Each transcript shall comply with
documentary exhibits and duplicates or § 2.123(g) with respect to arrangement,
photographs of physical exhibits, shall indexing and form.
be filed promptly with the Trademark (e) Upon motion by any party, for
Trial and Appeal Board. good cause, the Trademark Trial and
(g) Objections to questions and an- Appeal Board may order that any part
swers in depositions upon written ques- of a deposition transcript or any exhib-
tions may be considered at final hear- its that directly disclose any trade se-
ing. cret or other confidential research, de-
velopment, or commercial information
[48 FR 23139, May 23, 1983]
may be filed under seal and kept con-
§ 2.125 Filing and service of testimony. fidential under the provisions of
§ 2.27(e). If any party or any attorney or
(a) One copy of the transcript of tes- agent of a party fails to comply with
timony taken in accordance with an order made under this paragraph,
§ 2.123, together with copies of docu- the Board may impose any of the sanc-
mentary exhibits and duplicates or tions authorized by § 2.120(g).
photographs of physical exhibits, shall
be served on each adverse party within [48 FR 23140, May 23, 1983, as amended at 54
thirty days after completion of the FR 34900, Aug. 22, 1989; 63 FR 48099, Sept. 9,
taking of that testimony. If the tran- 1998]
script with exhibits is not served on
each adverse party within thirty days § 2.126 Form of submissions to the
Trademark Trial and Appeal Board.
or within an extension of time for the
purpose, any adverse party which was (a) Submissions may be made to the
not served may have remedy by way of Trademark Trial and Appeal Board on
a motion to the Trademark Trial and paper where Board practice or the rules
Appeal Board to reset such adverse par- in this part permit. A paper submis-
ty’s testimony and/or briefing periods, sion, including exhibits and deposi-
as may be appropriate. If the deposing tions, must meet the following require-
party fails to serve a copy of the tran- ments:
script with exhibits on an adverse (1) A paper submission must be print-
party after having been ordered to do ed in at least 11-point type and double-
so by the Board, the Board, in its dis- spaced, with text on one side only of
cretion, may strike the deposition, or each sheet;
321
§ 2.127 37 CFR Ch. I (7–1–16 Edition)
(2) A paper submission must be 8 to another time is specified by the Trade-

8.5 inches (20.3 to 21.6 cm.) wide and 11 mark Trial and Appeal Board, or the
to 11.69 inches (27.9 to 29.7 cm.) long, time is extended by stipulation of the
and contain no tabs or other such de- parties approved by the Board, or upon
vices extending beyond the edges of the motion granted by the Board, or upon
paper; order of the Board. If a motion for an
(3) If a paper submission contains di- extension is denied, the time for re-
viders, the dividers must not have any sponding to the motion remains as
extruding tabs or other devices, and specified under this section, unless oth-
must be on the same size and weight erwise ordered. Except as provided in
paper as the submission; paragraph (e)(1) of this section, a reply
(4) A paper submission must not be brief, if filed, shall be filed within fif-
stapled or bound; teen days from the date of service of
(5) All pages of a paper submission the brief in response to the motion.
must be numbered and exhibits shall be The time for filing a reply brief will
identified in the manner prescribed in not be extended. The Board will con-
§ 2.123(g)(2); sider no further papers in support of or
(6) Exhibits pertaining to a paper in opposition to a motion. Neither the
submission must be filed on paper and brief in support of a motion nor the
comply with the requirements for a brief in response to a motion shall ex-
paper submission. ceed twenty-five pages in length in its
(b) Submissions may be made to the entirety, including table of contents,
Trademark Trial and Appeal Board index of cases, description of the
electronically via the Internet where record, statement of the issues, recita-
the rules in this part or Board practice tion of the facts, argument, and sum-
permit, according to the parameters es- mary. A reply brief shall not exceed
tablished by the Board and published ten pages in length in its entirety. Ex-
on the Web site of the Office. Text in hibits submitted in support of or in op-
an electronic submission must be in at position to a motion are not considered
least 11-point type and double-spaced. part of the brief for purposes of deter-
Exhibits pertaining to an electronic mining the length of the brief. When a
submission must be made electroni- party fails to file a brief in response to
cally as an attachment to the submis- a motion, the Board may treat the mo-
sion. tion as conceded. An oral hearing will
(c) To be handled as confidential, not be held on a motion except on
submissions to the Trademark Trial order by the Board.
and Appeal Board that are confidential (b) Any request for reconsideration
in whole or part pursuant to § 2.125(e) or modification of an order or decision
must be submitted under a separate issued on a motion must be filed within
cover. Both the submission and its one month from the date thereof. A
cover must be marked confidential and brief in response must be filed within
must identify the case number and the 15 days from the date of service of the
parties. A copy of the submission with request.
the confidential portions redacted (c) Interlocutory motions, requests,
must be submitted. and other matters not actually or po-
[68 FR 55767, Sept. 26, 2003, as amended at 72 tentially dispositive of a proceeding
FR 42262, Aug. 1, 2007] may be acted upon by a single Admin-
istrative Trademark Judge of the
§ 2.127 Motions. Trademark Trial and Appeal Board or
(a) Every motion must be submitted by an Interlocutory Attorney of the
in written form and must meet the re- Board to whom authority so to act has
quirements prescribed in § 2.126. It shall been delegated.
contain a full statement of the (d) When any party files a motion to
grounds, and shall embody or be ac- dismiss, or a motion for judgment on
companied by a brief. Except as pro- the pleadings, or a motion for sum-
vided in paragraph (e)(1) of this sec- mary judgment, or any other motion
tion, a brief in response to a motion which is potentially dispositive of a
shall be filed within fifteen days from proceeding, the case will be suspended
the date of service of the motion unless by the Trademark Trial and Appeal
322
Board with respect to all matters not request for production and the docu-
germane to the motion and no party ments or things produced in response
should file any paper which is not ger- thereto, or a request for admission and
mane to the motion except as other- any exhibit thereto and the admission
wise specified in the Board’s suspension (or a statement that the party from
order. If the case is not disposed of as which an admission was requested
a result of the motion, proceedings will failed to respond thereto).
be resumed pursuant to an order of the (f) The Board will not hold any per-
Board when the motion is decided. son in contempt, or award attorneys’
(e)(1) A party may not file a motion fees or other expenses to any party.
for summary judgment until the party [48 FR 23140, May 23, 1983, as amended at 54
has made its initial disclosures, except FR 34900, Aug. 22, 1989; 63 FR 48099, Sept. 9,
for a motion asserting claim or issue 1998; 63 FR 52159, Sept. 30, 1998; 68 FR 55768,
preclusion or lack of jurisdiction by Sept. 26, 2003; 72 FR 42262, Aug. 1, 2007]
the Trademark Trial and Appeal Board.
A motion for summary judgment, if § 2.128 Briefs at final hearing.
filed, should be filed prior to the com- (a)(1) The brief of the party in the po-
mencement of the first testimony pe- sition of plaintiff shall be due not later
riod, as originally set or as reset, and than sixty days after the date set for
the Board, in its discretion, may deny the close of rebuttal testimony. The
as untimely any motion for summary brief of the party in the position of de-
judgment filed thereafter. A motion fendant, if filed, shall be due not later
under Rule 56(f) of the Federal Rules of than thirty days after the due date of
Civil Procedure, if filed in response to the first brief. A reply brief by the
a motion for summary judgment, shall party in the position of plaintiff, if
be filed within thirty days from the filed, shall be due not later than fifteen
date of service of the summary judg- days after the due date of the defend-
ment motion. The time for filing a mo- ant’s brief.
tion under Rule 56(f) will not be ex- (2) When there is a counterclaim, or
tended. If no motion under Rule 56(f) is when proceedings have been consoli-
filed, a brief in response to the motion dated and one party is in the position
for summary judgment shall be filed of plaintiff in one of the involved pro-
within thirty days from the date of ceedings and in the position of defend-
service of the motion unless the time is ant in another of the involved pro-
extended by stipulation of the parties ceedings, or when there is an inter-
approved by the Board, or upon motion ference or a concurrent use registra-
granted by the Board, or upon order of tion proceeding involving more than
the Board. If a motion for an extension two parties, the Trademark Trial and
is denied, the time for responding to Appeal Board will set the due dates for
the motion for summary judgment may the filing of the main brief, and the an-
remain as specified under this section. swering brief, and the rebuttal brief by
A reply brief, if filed, shall be filed the parties.
within fifteen days from the date of (3) When a party in the position of
service of the brief in response to the plaintiff fails to file a main brief, an
motion. The time for filing a reply order may be issued allowing plaintiff
brief will not be extended. The Board until a set time, not less than fifteen
will consider no further papers in sup- days, in which to show cause why the
port of or in opposition to a motion for Board should not treat such failure as
summary judgment. a concession of the case. If plaintiff
(2) For purposes of summary judg- fails to file a response to the order, or
ment only, the Board will consider any files a response indicating that he has
of the following, if a copy is provided lost interest in the case, judgment may
with the party’s brief on the summary be entered against plaintiff.
judgment motion: written disclosures (b) Briefs must be submitted in writ-
or disclosed documents, a discovery ten form and must meet the require-
deposition or any part thereof with any ments prescribed in § 2.126. Each brief
exhibit to the part that is filed, an in- shall contain an alphabetical index of
terrogatory and answer thereto with cited cases. Without prior leave of the
any exhibit made part of the answer, a Trademark Trial and Appeal Board, a
323
§ 2.129 37 CFR Ch. I (7–1–16 Edition)
main brief on the case shall not exceed tablishment of constructive use. The
fifty-five pages in length in its en- time for filing an appeal or for com-
tirety, including the table of contents, mencing a civil action under section 21
index of cases, description of the of the Act shall run from the date of
record, statement of the issues, recita- the entry of the judgment.
tion of the facts, argument, and sum-
mary; and a reply brief shall not exceed
FR 29554, July 13, 1989; 54 FR 34900, Aug. 22,
twenty-five pages in its entirety. 1989; 54 FR 37597, Sept. 11, 1989; 72 FR 42263,
[48 FR 23140, May 23, 1983; 48 FR 27226, June Aug. 1, 2007]
14, 1983, as amended at 54 FR 34900, Aug. 22,
1989; 68 FR 55768, Sept. 26, 2003] § 2.130 New matter suggested by the
trademark examining attorney.
§ 2.129 Oral argument; reconsider-
ation. If, while an inter partes proceeding in-
volving an application under section 1
(a) If a party desires to have an oral or 44 of the Act is pending, facts appear
argument at final hearing, the party which, in the opinion of the trademark
shall request such argument by a sepa- examining attorney, render the mark
rate notice filed not later than ten in the application unregistrable, the
days after the due date for the filing of facts should be called to the attention
the last reply brief in the proceeding. of the Trademark Trial and Appeal
Oral arguments will be heard by at Board. The Board may suspend the pro-
least three Administrative Trademark ceeding and refer the application to the
Judges of the Trademark Trial and Ap- trademark examining attorney for an
peal Board at the time specified in the ex parte determination of the question
notice of hearing. If any party appears of registrability. A copy of the trade-
at the specified time, that party will be mark examining attorney’s final action
heard. If the Board is prevented from will be furnished to the parties to the
hearing the case at the specified time, inter partes proceeding following the
a new hearing date will be set. Unless final determination of registrability by
otherwise permitted, oral arguments in the trademark examining attorney or
an inter partes case will be limited to the Board on appeal. The Board will
thirty minutes for each party. A party consider the application for such fur-
in the position of plaintiff may reserve ther inter partes action as may be ap-
part of the time allowed for oral argu- propriate.
ment to present a rebuttal argument.
(b) The date or time of a hearing may [68 FR 55768, Sept. 26, 2003]
be reset, so far as is convenient and
proper, to meet the wishes of the par- § 2.131 Remand after decision in inter
ties and their attorneys or other au- partes proceeding.
thorized representatives. If, during an inter partes proceeding
(c) Any request for rehearing or re- involving an application under section
consideration or modification of a deci- 1 or 44 of the Act, facts are disclosed
sion issued after final hearing must be which appear to render the mark
filed within one month from the date of unregistrable, but such matter has not
the decision. A brief in response must been tried under the pleadings as filed
be filed within fifteen days from the by the parties or as they might be
date of service of the request. The deemed to be amended under Rule 15(b)
times specified may be extended by of the Federal Rules of Civil Procedure
order of the Trademark Trial and Ap- to conform to the evidence, the Trade-
peal Board on motion for good cause. mark Trial and Appeal Board, in lieu of
(d) When a party to an inter partes determining the matter in the decision
proceeding before the Trademark Trial on the proceeding, may remand the ap-
and Appeal Board cannot prevail with- plication to the trademark examining
out establishing constructive use pur- attorney for reexamination in the
suant to section 7(c) of the Act in an event the applicant ultimately prevails
application under section 1(b) of the in the inter partes proceeding. Upon re-
Act, the Trademark Trial and Appeal mand, the trademark examining attor-
Board will enter a judgment in favor of ney shall reexamine the application in
that party, subject to the party’s es- light of the reference by the Board. If,
324
upon reexamination, the trademark ex- under paragraph (a) even if the motion
amining attorney finally refuses reg- was filed after the opening of the testi-
istration to the applicant, an appeal mony period of the moving party.
may be taken as provided by §§ 2.141
and 2.142. FR 28710, Aug. 11, 1986]
[68 FR 55768, Sept. 26, 2003]
§ 2.133 Amendment of application or
§ 2.132 Involuntary dismissal for fail- registration during proceedings.
ure to take testimony.
(a) An application subject to an oppo-
(a) If the time for taking testimony sition may not be amended in sub-
by any party in the position of plaintiff stance nor may a registration subject
has expired and that party has not to a cancellation be amended or dis-
taken testimony or offered any other claimed in part, except with the con-
evidence, any party in the position of sent of the other party or parties and
defendant may, without waiving the the approval of the Trademark Trial
right to offer evidence in the event the and Appeal Board, or upon motion
motion is denied, move for dismissal on granted by the Board.
the ground of the failure of the plain- (b) If, in an inter partes proceeding,
tiff to prosecute. The party in the posi- the Trademark Trial and Appeal Board
tion of plaintiff shall have fifteen days finds that a party whose application or
from the date of service of the motion registration is the subject of the pro-
to show cause why judgment should ceeding is not entitled to registration
not be rendered against him. In the ab- in the absence of a specified restriction
sence of a showing of good and suffi- to the application or registration, the
cient cause, judgment may be rendered Board will allow the party time in
against the party in the position of which to file a motion that the applica-
plaintiff. If the motion is denied, testi- tion or registration be amended to con-
mony periods will be reset for the form to the findings of the Board, fail-
party in the position of defendant and ing which judgment will be entered
for rebuttal. against the party.
(b) If no evidence other than a copy
(c) Geographic limitations will be
or copies of Patent and Trademark Of-
considered and determined by the
fice records is offered by any party in
Trademark Trial and Appeal Board
the position of plaintiff, any party in
only in the context of a concurrent use
the position of defendant may, without
registration proceeding.
waiving the right to offer evidence in
(d) A plaintiff’s pleaded registration
the event the motion is denied, move
will not be restricted in the absence of
for dismissal on the ground that upon
a counterclaim to cancel the registra-
the law and the facts the party in the
tion in whole or in part, except that a
position of plaintiff has shown no right
counterclaim need not be filed if the
to relief. The party in the position of
registration is the subject of another
plaintiff shall have fifteen days from
proceeding between the same parties or
the date of service of the motion to file
anyone in privity therewith.
a brief in response to the motion. The
Trademark Trial and Appeal Board [54 FR 37597, Sept. 11, 1989, as amended at 72
may render judgment against the party FR 42263, Aug. 1, 2007]
in the position of plaintiff, or the
Board may decline to render judgment § 2.134 Surrender or voluntary can-
until all of the evidence is in the cellation of registration.
record. If judgment is not rendered, (a) After the commencement of a
testimony periods will be reset for the cancellation proceeding, if the respond-
party in the position of defendant and ent applies for cancellation of the in-
for rebuttal. volved registration under section 7(e)
(c) A motion filed under paragraph of the Act of 1946 without the written
(a) or (b) of this section must be filed consent of every adverse party to the
before the opening of the testimony pe- proceeding, judgment shall be entered
riod of the moving party, except that against the respondent. The written
the Trademark Trial and Appeal Board consent of an adverse party may be
may in its discretion grant a motion signed by the adverse party or by the
325
§ 2.135 37 CFR Ch. I (7–1–16 Edition)
adverse party’s attorney or other au- APPEALS

thorized representative.
(b) After the commencement of a § 2.141 Ex parte appeals from action of
trademark examining attorney.
cancellation proceeding, if it comes to
the attention of the Trademark Trial (a) An applicant may, upon final re-
and Appeal Board that the respondent fusal by the trademark examining at-
has permitted his involved registration torney, appeal to the Trademark Trial
and Appeal Board upon payment of the
to be cancelled under section 8 of the
prescribed fee for each class in the ap-
Act of 1946 or has failed to renew his
plication for which an appeal is taken,
involved registration under section 9 of within six months of the date of
the Act of 1946, an order may be issued issuance of the final action. A second
allowing respondent until a set time, refusal on the same grounds may be
not less than fifteen days, in which to considered as final by the applicant for
show cause why such cancellation or purpose of appeal.
failure to renew should not be deemed (b) The applicant must pay an appeal
to be the equivalent of a cancellation fee for each class from which the ap-
by request of respondent without the peal is taken. If the applicant does not
consent of the adverse party and pay an appeal fee for at least one class
should not result in entry of judgment of goods or services before expiration
against respondent as provided by of the six-month statutory filing pe-
paragraph (a) of this section. In the ab- riod, the application will be abandoned.
sence of a showing of good and suffi- In a multiple-class application, if an
cient cause, judgment may be entered appeal fee is submitted for fewer than
against respondent as provided by all classes, the applicant must specify
paragraph (a) of this section. the class(es) in which the appeal is
taken. If the applicant timely submits
[48 FR 23141, May 23, 1983, as amended at 54 a fee sufficient to pay for an appeal in
FR 34900, Aug. 22, 1989; 63 FR 48100, Sept. 9, at least one class, but insufficient to
1998] cover all the classes, and the applicant
has not specified the class(es) to which
§ 2.135 Abandonment of application or the fee applies, the Board will issue a
mark.
written notice setting a time limit in
After the commencement of an oppo- which the applicant may either pay the
sition, concurrent use, or interference additional fees or specify the class(es)
proceeding, if the applicant files a being appealed. If the applicant does
written abandonment of the applica- not submit the required fee or specify
tion or of the mark without the writ- the class(es) being appealed within the
ten consent of every adverse party to set time period, the Board will apply
the proceeding, judgment shall be en- the fee(s) to the class(es) in ascending
tered against the applicant. The writ- order, beginning with the lowest num-
ten consent of an adverse party may be bered class.
signed by the adverse party or by the [73 FR 67772, Nov. 17, 2008]
adverse party’s attorney or other au-
thorized representative. § 2.142 Time and manner of ex parte
appeals.
[54 FR 34900, Aug. 22, 1989]
(a) Any appeal filed under the provi-
§ 2.136 Status of application on termi- sions of § 2.141 must be filed within six
nation of proceeding. months from the date of the final re-
fusal or the date of the action from
On termination of a proceeding in- which the appeal is taken. An appeal is
volving an application, the application, taken by filing a notice of appeal in
if the judgment is not adverse, returns written form, as prescribed in § 2.126,
to the status it had before the institu- and paying the appeal fee.
tion of the proceedings. If the judg- (b)(1) The brief of appellant shall be
ment is adverse to the applicant, the filed within sixty days from the date of
application stands refused without fur- appeal. If the brief is not filed within
ther action and all proceedings thereon the time allowed, the appeal may be
are considered terminated. dismissed. The examiner shall, within
326
sixty days after the brief of appellant designated by the supervisory attorney
is sent to the examiner, file with the thereof, shall present an oral argu-
Trademark Trial and Appeal Board a ment. If no request for an oral hearing
written brief answering the brief of ap- is made by the appellant, the appeal
pellant and shall mail a copy of the will be decided on the record and briefs.
brief to the appellant. The appellant (3) Oral argument will be limited to
may file a reply brief within twenty twenty minutes by the appellant and
days from the date of mailing of the ten minutes by the examiner. The ap-
brief of the examiner. pellant may reserve part of the time al-
(2) Briefs must be submitted in writ- lowed for oral argument to present a
ten form and must meet the require- rebuttal argument.
ments prescribed in § 2.126. Each brief (f)(1) If, during an appeal from a re-
shall contain an alphabetical index of fusal of registration, it appears to the
cited cases. Without prior leave of the Trademark Trial and Appeal Board
Trademark Trial and Appeal Board, a that an issue not previously raised may
brief shall not exceed twenty-five pages render the mark of the appellant
in length in its entirety, including the unregistrable, the Board may suspend
table of contents, index of cases, de- the appeal and remand the application
scription of the record, statement of to the examiner for further examina-
the issues, recitation of the facts, argu- tion to be completed within thirty
ment, and summary. days.
(c) All requirements made by the ex- (2) If the further examination does
aminer and not the subject of appeal not result in an additional ground for
shall be complied with prior to the fil- refusal of registration, the examiner
ing of an appeal. shall promptly return the application
(d) The record in the application to the Board, for resumption of the ap-
should be complete prior to the filing peal, with a written statement that
of an appeal. The Trademark Trial and further examination did not result in
Appeal Board will ordinarily not con- an additional ground for refusal of reg-
sider additional evidence filed with the istration.
Board by the appellant or by the exam- (3) If the further examination does
iner after the appeal is filed. After an result in an additional ground for re-
appeal is filed, if the appellant or the fusal of registration, the examiner and
examiner desires to introduce addi- appellant shall proceed as provided by
tional evidence, the appellant or the §§ 2.61, 2.62, and 2.63. If the ground for
examiner may request the Board to refusal is made final, the examiner
suspend the appeal and to remand the shall return the application to the
application for further examination. Board, which shall thereupon issue an
(e)(1) If the appellant desires an oral order allowing the appellant sixty days
hearing, a request should be made by a from the date of the order to file a sup-
separate notice filed not later than ten plemental brief limited to the addi-
days after the due date for a reply tional ground for the refusal of reg-
brief. Oral argument will be heard by istration. If the supplemental brief is
at least three Administrative Trade- not filed by the appellant within the
mark Judges of the Trademark Trial time allowed, the appeal may be dis-
and Appeal Board at the time specified missed.
in the notice of hearing, which may be (4) If the supplemental brief of the
reset if the Board is prevented from appellant is filed, the examiner shall,
hearing the argument at the specified within sixty days after the supple-
time or, so far as is convenient and mental brief of the appellant is sent to
proper, to meet the wish of the appel- the examiner, file with the Board a
lant or the appellant’s attorney or written brief answering the supple-
other authorized representative. mental brief of appellant and shall
(2) If the appellant requests an oral mail a copy of the brief to the appel-
argument, the examiner who issued the lant. The appellant may file a reply
refusal of registration or the require- brief within twenty days from the date
ment from which the appeal is taken, of mailing of the brief of the examiner.
or in lieu thereof another examiner (5) If an oral hearing on the appeal

from the same examining division as had been requested prior to the remand
327
§ 2.144 37 CFR Ch. I (7–1–16 Edition)
of the application but not yet held, an § 2.145 Appeal to court and civil ac-
oral hearing will be set and heard as tion.
provided in paragraph (e) of this sec- (a) Appeal to U.S. Court of Appeals for
tion. If an oral hearing had been held the Federal Circuit. An applicant for
prior to the remand or had not been
registration, or any party to an inter-
previously requested by the appellant,
ference, opposition, or cancellation
an oral hearing may be requested by
proceeding, or any party to an applica-
the appellant by a separate notice filed
tion to register as a concurrent user,
not later than ten days after the due
hereinafter referred to as inter partes
date for a reply brief on the additional
proceedings, who is dissatisfied with
ground for refusal of registration. If
the decision of the Trademark Trial
the appellant files a request for an oral
and Appeal Board, and any registrant
hearing, one will be set and heard as
who has filed an affidavit or declara-
provided in paragraph (e) of this sec-
tion under section 8 or section 71 of the
tion.
Act or who has filed an application for
(6) If, during an appeal from a refusal renewal and is dissatisfied with the de-
of registration, it appears to the exam- cision of the Director (§§ 2.165 and
iner that an issue not involved in the 2.184), may appeal to the U.S. Court of
appeal may render the mark of the ap- Appeals for the Federal Circuit. The
pellant unregistrable, the examiner appellant must take the following
may, by written request, ask the Board steps in such an appeal:
to suspend the appeal and to remand
(1) In the Patent and Trademark Of-
the application to the examiner for fur-
fice give written notice of appeal to the
ther examination. If the request is
Director (see paragraphs (b) and (d) of
granted, the examiner and appellant
this section);
shall proceed as provided by §§ 2.61, 2.62,
and 2.63. After the additional ground (2) In the court, file a copy of the no-
for refusal of registration has been tice of appeal and pay the fee for ap-
withdrawn or made final, the examiner peal, as provided by the rules of the
shall return the application to the Court.
Board, which shall resume proceedings (b) Notice of appeal. (1) When an ap-
in the appeal and take further appro- peal is taken to the U.S. Court of Ap-
priate action with respect thereto. peals for the Federal Circuit, the appel-
(g) An application which has been lant shall give notice thereof in writing
considered and decided on appeal will to the Director, which notice shall be
not be reopened except for the entry of filed in the Patent and Trademark Of-
a disclaimer under section 6 of the Act fice, within the time specified in para-
of 1946 or upon order of the Director, graph (d) of this section. The notice
but a petition to the Director to reopen shall specify the party or parties tak-
an application will be considered only ing the appeal and shall designate the
upon a showing of sufficient cause for decision or part thereof appealed from.
consideration of any matter not al- (2) In inter partes proceedings, the no-
ready adjudicated. tice must be served as provided in
§ 2.119.
[48 FR 23141, May 23, 1983, as amended at 54 (3) Notices of appeal directed to the
FR 34901, Aug. 22, 1989; 68 FR 55768, Sept. 26, Director shall be mailed to or served by
2003; 72 FR 42263, Aug. 1, 2007; 80 FR 2312, Jan.
16, 2015]
hand on the General Counsel, according
to part 104 of this chapter, with a du-
§ 2.144 Reconsideration of decision on plicate copy mailed or served by hand
ex parte appeal. on the Trademark Trial and Appeal
Board.
Any request for rehearing or recon-
(c) Civil action. (1) Any person who
sideration, or modification of the deci-
may appeal to the U.S. Court of Ap-
sion, must be filed within one month
peals for the Federal Circuit (para-
from the date of the decision. Such
graph (a) of this section), may have
time may be extended by the Trade-
remedy by civil action under section
mark Trial and Appeal Board upon a
21(b) of the Act. Such civil action must
showing of sufficient cause.

be commenced within the time speci-
[54 FR 29554, July 13, 1989] fied in paragraph (d) of this section.
328
(2) Any applicant or registrant in an mencing a civil action falls on a Satur-

ex parte case who takes an appeal to day, Sunday or Federal holiday in the
the U.S. Court of Appeals for the Fed- District of Columbia, the time is ex-
eral Circuit waives any right to pro- tended to the next day which is neither
ceed under section 21(b) of the Act. a Saturday, Sunday nor a Federal holi-
(3) Any adverse party to an appeal day.
taken to the U.S. Court of Appeals for (3) If a party to an inter partes pro-
the Federal Circuit by a defeated party ceeding has taken an appeal to the U.S.
in an inter partes proceeding may file a Court of Appeals for the Federal Cir-
notice with the Office, addressed to the cuit and an adverse party has filed no-
Office of the General Counsel, accord- tice under section 21(a)(1) of the Act
ing to part 104 of this chapter, within electing to have all further proceedings
twenty days after the filing of the de- conducted under section 21(b) of the
feated party’s notice of appeal to the Act, the time for filing a civil action
court (paragraph (b) of this section), thereafter is specified in section
electing to have all further proceedings 21(a)(1) of the Act. The time for filing a
conducted as provided in section 21(b) cross-action expires 14 days after serv-
of the Act. The notice of election must ice of the summons and complaint.
be served as provided in § 2.119. (e) Extensions of time to commence judi-
(4) In order to avoid premature ter- cial review. The Director may extend
mination of a proceeding, a party who the time for filing an appeal or com-
commences a civil action, pursuant to mencing a civil action (1) for good
section 21(b) of the Act, must file writ- cause shown if requested in writing be-
ten notice thereof at the Trademark fore the expiration of the period for fil-
Trial and Appeal Board. ing an appeal or commencing a civil
(d) Time for appeal or civil action. (1) action, or (2) upon written request
The time for filing the notice of appeal after the expiration of the period for
to the U.S. Court of Appeals for the filing an appeal or commencing a civil
Federal Circuit (paragraph (b) of this action upon a showing that the failure
section), or for commencing a civil ac- to act was the result of excusable ne-
tion (paragraph (c) of this section), is glect.
two months from the date of the deci-
sion of the Trademark Trial and Ap- FR 16414, May 9, 1988; 54 FR 29554, July 13,
peal Board or the Director, as the case 1989; 54 FR 34901, Aug. 22, 1989; 58 FR 54503,
may be. If a request for rehearing or re- Oct. 22, 1993; 68 FR 14337, Mar. 25, 2003; 68 FR
consideration or modification of the 55769, Sept. 26, 2003; 80 FR 2312, Jan. 16, 2015]
decision is filed within the time speci-
fied in § 2.127(b), 2.129(c) or 2.144, or PETITIONS AND ACTION BY THE DIRECTOR
within any extension of time granted
thereunder, the time for filing an ap- § 2.146 Petitions to the Director.
peal or commencing a civil action shall (a) Petition may be taken to the Di-
expire two months after action on the rector:
request. In inter partes cases, the time (1) From any repeated or final formal
for filing a cross-action or a notice of a requirement of the examiner in the ex
cross-appeal expires parte prosecution of an application if
(i) 14 days after service of the notice permitted by § 2.63(a) and (b);
of appeal or the summons and com- (2) In any case for which the Act of
plaint; or 1946, or title 35 of the United States
(ii) Two months from the date of the Code, or this part of title 37 of the Code
decision of the Trademark Trial and of Federal Regulations specifies that
Appeal Board or the Director, which- the matter is to be determined directly
ever is later. or reviewed by the Director;
(2) The times specified in this section (3) To invoke the supervisory author-
in days are calendar days. The times ity of the Director in appropriate cir-
specified herein in months are calendar cumstances;
months except that one day shall be (4) In any case not specifically de-
added to any two-month period which fined and provided for by this part of
includes February 28. If the last day of title 37 of the Code of Federal Regula-
time specified for an appeal, or com- tions;
329
§ 2.146 37 CFR Ch. I (7–1–16 Edition)
(5) In an extraordinary situation, tial opposer or the applicant, as the

when justice requires and no other case may be, may file a response within
party is injured thereby, to request a fifteen days from the date of service of
suspension or waiver of any require- the petition and must serve a copy of
ment of the rules not being a require- the response on the petitioner, with
ment of the Act of 1946. proof of service as provided by § 2.119.
(b) Questions of substance arising No further document relating to the
during the ex parte prosecution of ap- petition may be filed.
plications, including, but not limited (2) A petition from an interlocutory
to, questions arising under sections 2, order of the Trademark Trial and Ap-
3, 4, 5, 6 and 23 of the Act of 1946, are peal Board must be filed within thirty
not considered to be appropriate sub- days after the date of issuance of the
ject matter for petitions to the Direc- order from which relief is requested.
tor. Any brief in response to the petition
(c) Every petition to the Director must be filed, with any supporting ex-
shall include a statement of the facts hibits, within fifteen days from the
relevant to the petition, the points to date of service of the petition. Peti-
be reviewed, the action or relief re- tions and responses to petitions, and
quested, and the fee required by § 2.6. any documents accompanying a peti-
Any brief in support of the petition tion or response under this subsection
shall be embodied in or accompany the must be served on every adverse party
petition. The petition must be signed pursuant to § 2.119.
by the petitioner, someone with legal (f) An oral hearing will not be held on
authority to bind the petitioner (e.g., a a petition except when considered nec-
corporate officer or general partner of essary by the Director.
a partnership), or a practitioner quali- (g) The mere filing of a petition to
fied to practice under § 11.14 of this the Director will not act as a stay in
chapter, in accordance with the re- any appeal or inter partes proceeding
quirements of § 2.193(e)(5). When facts that is pending before the Trademark
are to be proved on petition, the peti- Trial and Appeal Board nor stay the
tioner must submit proof in the form of period for replying to an Office action
verified statements signed by someone in an application except when a stay is
with firsthand knowledge of the facts specifically requested and is granted or
to be proved, and any exhibits. when §§ 2.63(a) and (b) and 2.65(a) are
(d) A petition must be filed within applicable to an ex parte application.
two months of the date of issuance of (h) Authority to act on petitions, or
the action from which relief is re- on any petition, may be delegated by
quested, unless a different deadline is the Director.
specified elsewhere in this chapter, and (i) Where a petitioner seeks to reac-
no later than two months from the tivate an application or registration
date when Office records are updated to that was abandoned, cancelled or ex-
show that the registration has been pired because documents were lost or
cancelled or has expired. mishandled, the Director may deny the
(e)(1) A petition from the grant or de- petition if the petitioner was not dili-
nial of a request for an extension of gent in checking the status of the ap-
time to file a notice of opposition must plication or registration. To be consid-
be filed within fifteen days from the ered diligent, a petitioner must:
date of issuance of the grant or denial (1) During the pendency of an appli-
of the request. A petition from the cation, check the status of the applica-
grant of a request must be served on tion every six months between the fil-
the attorney or other authorized rep- ing date of the application and
resentative of the potential opposer, if issuance of a registration;
any, or on the potential opposer. A pe- (2) After registration, check the sta-
tition from the denial of a request tus of the registration every six
must be served on the attorney or months from the filing of an affidavit
other authorized representative of the of use or excusable nonuse under sec-
applicant, if any, or on the applicant. tion 8 or 71 of the Act, or a renewal ap-
Proof of service of the petition must be plication under section 9 of the Act,
made as provided by § 2.119. The poten- until the petitioner receives notice
330
that the affidavit or renewal applica- § 2.153 Publication requirements.

tion has been accepted; and The owner of a mark registered under
(3) If the status check reveals that the provisions of the Trademark Act of
the Office has not received a document 1881 or 1905 may at any time prior to
filed by the petitioner, or that the Of- the expiration of the period for which
fice has issued an action or notice that the registration was issued or renewed,
the petitioner has not received, the pe- upon the payment of the prescribed fee,
titioner must promptly request correc- file an affidavit or declaration in ac-
tive action. cordance with § 2.20 setting forth those
(j) If the Director denies a petition,
goods or services in the registration on
the petitioner may request reconsider-
or in connection with which said mark
ation, if the petitioner:
is in use in commerce, and stating that
(1) Files the request within two
the owner claims the benefits of the
months of the date of issuance of the
Act of 1946. The affidavit or declaration
decision denying the petition; and
must be signed by a person properly
(2) Pays a second petition fee under
authorized to sign on behalf of the
§ 2.6.
owner under § 2.193(e)(1).
[48 FR 23142, May 23, 1983; 48 FR 27226, June
[74 FR 54909, Oct. 26, 2009]
14, 1983, as amended at 63 FR 48100, Sept. 9,
1998; 64 FR 48924, Sept. 8, 1999; 68 FR 55769,
Sept. 26, 2003; 73 FR 67773, Nov. 17, 2008; 74 FR
§ 2.154 Publication in Official Gazette.
54909, Oct. 26, 2009; 80 FR 2312, Jan. 16, 2015; 80 A notice of the claim of benefits
FR 33188, June 11, 2015] under the Act of 1946 and a reproduc-
tion of the mark will then be published
§ 2.147 [Reserved] in the Official Gazette as soon as prac-
§ 2.148 Director may suspend certain ticable. The published mark will retain
rules. its original registration number.
In an extraordinary situation, when § 2.155 Notice of publication.
justice requires and no other party is
The Office will send the registrant a
injured thereby, any requirement of
notice of publication of the mark and
the rules in this part not being a re-
of the requirement for filing the affi-
quirement of the statute may be sus-
davit or declaration required by sec-
pended or waived by the Director.
tion 8 of the Act.
CERTIFICATE [64 FR 48924, Sept. 8, 1999]
§ 2.151 Certificate. § 2.156 Not subject to opposition; sub-

When the Office determines that a ject to cancellation.
mark is registrable, the Office will The published mark is not subject to
issue a certificate stating that the ap- opposition, but is subject to petitions
plicant is entitled to registration on to cancel as specified in § 2.111 and to
the Principal Register or on the Sup- cancellation for failure to file the affi-
plemental Register. The certificate davit or declaration required by sec-
will state the application filing date, tion 8 of the Act.
the act under which the mark is reg-
[64 FR 48924, Sept. 8, 1999]
istered, the date of issue, and the num-
ber of the registration. A reproduction REREGISTRATION OF MARKS REGISTERED
of the mark and pertinent data from UNDER PRIOR ACTS
the application will be sent with the
certificate. A notice of the require- § 2.158 Reregistration of marks reg-
ments of sections 8 and 71 of the Act istered under Acts of 1881, 1905,
will accompany the certificate. and 1920.
[68 FR 55769, Sept. 26, 2003] Trademarks registered under the Act
of 1881, the Act of 1905 or the Act of
PUBLICATION OF MARKS REGISTERED 1920 may be reregistered under the Act
UNDER 1905 ACT of 1946, either on the Principal Reg-
ister, if eligible, or on the Supple-
AUTHORITY: Secs. 2.153 to 2.156 also issued mental Register, but a new complete
under sec. 12, 60 Stat. 432; 15 U.S.C. 1062. application for registration must be
331
§ 2.160 37 CFR Ch. I (7–1–16 Edition)
filed complying with the rules relating cuted on or after the beginning of the
thereto, and such application will be filing period specified in § 2.160(a);
subject to examination and other pro- (c) Include the U.S. registration num-
ceedings in the same manner as other ber;
applications filed under the Act of 1946. (d)(1) Include the fee required by § 2.6
See § 2.26 for use of old drawing. for each class that the affidavit or dec-
laration covers;
CANCELLATION FOR FAILURE TO FILE
AFFIDAVIT OR DECLARATION (2) If the affidavit or declaration is
filed during the grace period under sec-
AUTHORITY: Secs. 2.161 to 2.165 also issued tion 8(a)(3) of the Act, include the
under sec. 8, 60 Stat. 431; 15 U.S.C. 1058. grace period surcharge per class re-
quired by § 2.6;
§ 2.160 Affidavit or declaration of con- (3) If at least one fee is submitted for
tinued use or excusable nonuse re- a multiple-class registration, but the
quired to avoid cancellation of reg- fee is insufficient to cover all the class-
istration.
es, and the class(es) to which the fee(s)
(a) During the following time periods, should be applied are not specified, the
the owner of the registration must file Office will issue a notice requiring ei-
an affidavit or declaration of continued ther submission of the additional fee(s)
use or excusable nonuse, or the reg- or specification of the class(es) to
istration will be cancelled: which the initial fee(s) should be ap-
(1)(i) For registrations issued under plied. Additional fee(s) may be sub-
the Trademark Act of 1946, on or after mitted if the requirements of § 2.164 are
the fifth anniversary and no later than met. If the additional fee(s) are not
the sixth anniversary after the date of submitted within the time period set
registration; or
out in the Office action and the
(ii) For registrations issued under
class(es) to which the original fee(s)
prior Acts, on or after the fifth anni-
should be applied are not specified, the
versary and no later than the sixth an-
Office will presume that the fee(s)
niversary after the date of publication
under section 12(c) of the Act; and cover the classes in ascending order,
(2) For all registrations, within the beginning with the lowest numbered
year before the end of every ten-year class;
period after the date of registration. (e)(1) Specify the goods, services, or
(3) The affidavit or declaration may nature of the collective membership
be filed within a grace period of six organization for which the mark is in
months after the end of the deadline use in commerce, and/or the goods,
set forth in paragraphs (a)(1) and (a)(2) services, or nature of the collective
of this section, with payment of the membership organization for which ex-
grace period surcharge per class re- cusable nonuse is claimed under para-
quired by section 8(a)(3) of the Act and graph (f)(2) of this section; and
§ 2.6. (2) Specify the goods, services, or
(b) For the requirements for the affi- classes being deleted from the registra-
davit or declaration, see § 2.161. tion, if the affidavit or declaration cov-
ers fewer than all the goods, services,
FR 35976, June 24, 2010] or classes in the registration;
(f)(1) State that the registered mark
§ 2.161 Requirements for a complete is in use in commerce; or
affidavit or declaration of contin- (2) If the registered mark is not in
ued use or excusable nonuse. use in commerce on or in connection
A complete affidavit or declaration with all the goods, services, or classes
under section 8 of the Act must: specified in the registration, set forth
(a) Be filed by the owner within the the date when such use of the mark in
period set forth in § 2.160(a); commerce stopped and the approxi-
(b) Include a verified statement at- mate date when such use is expected to
testing to the use in commerce or ex- resume; and recite facts to show that
cusable nonuse of the mark within the nonuse as to those goods, services, or
period set forth in section 8 of the Act. classes is due to special circumstances
This verified statement must be exe- that excuse the nonuse and is not due
332
to an intention to abandon the mark; clude a copy of the revised certifi-

and cation standards;
(g) Include one specimen showing (2) State that the owner is exercising
how the mark is in use in commerce for legitimate control over the use of the
each class in the registration, unless mark in commerce; and
excusable nonuse is claimed under (3) Satisfy the requirements of
paragraph (f)(2) of this section. When § 2.45(a)(4)(i)(A) and (C).
requested by the Office, additional (k) For requirements of a complete
specimens must be provided. The speci- affidavit or declaration of use in com-
men must meet the requirements of merce or excusable nonuse for a reg-
§ 2.56. istration that issued from a section
(h) The Office may require the owner 66(a) basis application, see § 7.37.
to furnish such information, exhibits, [64 FR 48924, Sept. 8, 1999, as amended at 67
affidavits or declarations, and such ad- FR 79522, Dec. 30, 2002; 68 FR 55769, Sept. 26,
ditional specimens as may be reason- 2003; 73 FR 47686, Aug. 14, 2008; 73 FR 67773,
Nov. 17, 2008; 74 FR 54910, Oct. 26, 2009; 75 FR
ably necessary to the proper examina-
35976, June 24, 2010; 77 FR 30207, May 22, 2012;
tion of the affidavit or declaration 80 FR 33188, June 11, 2015]
under section 8 of the Act.
(i) Additional requirements for a col- § 2.162 Notice to registrant.
lective mark: In addition to the above When a certificate of registration is
requirements, a complete affidavit or originally issued, the Office includes a
declaration pertaining to a collective notice of the requirement for filing the
mark must: affidavit or declaration of use or excus-
(1) State that the owner is exercising able nonuse under section 8 of the Act.
legitimate control over the use of the However the affidavit or declaration
mark in commerce; and must be filed within the time period re-
(2) If the registration issued from an quired by section 8 of the Act even if
application based solely on section 44 this notice is not received.
of the Act, state the nature of the own-
[64 FR 48925, Sept. 8, 1999]
er’s control over the use of the mark
by the members in the first affidavit or § 2.163 Acknowledgment of receipt of
declaration filed under paragraph (a) of affidavit or declaration.
this section. The Office will issue a notice as to
(j) Additional requirements for a cer- whether an affidavit or declaration is
tification mark: In addition to the acceptable, or the reasons for refusal.
above requirements, a complete affi- (a) If the affidavit or declaration is
davit or declaration pertaining to a filed within the time periods set forth
certification mark must: in section 8 of the Act, deficiencies
(1) Include a copy of the certification may be corrected after notification
standards specified in § 2.45(a)(4)(i)(B); from the Office if the requirements of
(i) Submitting certification standards § 2.164 are met.
for the first time. If the registration (b) A response to the refusal must be
issued from an application based solely filed within six months of the date of
on section 44 of the Act, include a copy issuance of the Office action, or before
of the certification standards in the the end of the filing period set forth in
first affidavit or declaration filed section 8(a) of the Act, whichever is
under paragraph (a) of this section; or later. The response must be signed by
(ii) Certification standards submitted in the owner, someone with legal author-
prior filing. If the certification stand- ity to bind the owner (e.g., a corporate
ards in use at the time of filing the af- officer or general partner of a partner-
fidavit or declaration have not changed ship), or a practitioner qualified to
since the date they were previously practice under § 11.14 of this chapter, in
submitted to the Office, include a accordance with the requirements of
statement to that effect; if the certifi- § 2.193(e)(2).
cation standards in use at the time of (c) If no response is filed within this
filing the affidavit or declaration have time period, the registration will be
changed since the date they were pre- cancelled, unless time remains in the
viously submitted to the Office, in- grace period under section 8(a)(3) of the
333
§ 2.164 37 CFR Ch. I (7–1–16 Edition)
Act. If time remains in the grace pe- rector to review the action. The peti-
riod, the owner may file a complete, tion must be filed within six months of
new affidavit. the date of issuance of the action main-
[75 FR 35976, June 24, 2010, as amended at 76
taining the refusal, or the Office will
FR 69133, Nov. 8, 2011] cancel the registration and issue a no-
tice of the cancellation.
§ 2.164 Correcting deficiencies in affi- (c) A decision by the Director is nec-
davit or declaration. essary before filing an appeal or com-
(a) If the affidavit or declaration is mencing a civil action in any court.
filed within the time periods set forth [64 FR 48925, Sept. 8, 1999, as amended at 73
in section 8 of the Act, deficiencies FR 67773, Nov. 17, 2008]
may be corrected after notification
from the Office, as follows: § 2.166 Affidavit of continued use or
(1) Correcting deficiencies in affidavits excusable nonuse combined with
or declarations timely filed within the pe- renewal application.
riods set forth in sections 8(a)(1) and An affidavit or declaration under sec-
8(a)(2) of the Act. If the affidavit or dec- tion 8 of the Act and a renewal applica-
laration is timely filed within the rel- tion under section 9 of the Act may be
evant filing period set forth in section combined into a single document, pro-
8(a)(1) or section 8(a)(2) of the Act, defi- vided that the document meets the re-
ciencies may be corrected before the quirements of both sections 8 and 9 of
end of this filing period without paying the Act.
a deficiency surcharge. Deficiencies [64 FR 48925, Sept. 8, 1999]
may be corrected after the end of this
filing period with payment of the defi- AFFIDAVIT OR DECLARATION UNDER
ciency surcharge required by section SECTION 15
8(c) of the Act and § 2.6.
(2) Correcting deficiencies in affidavits § 2.167 Affidavit or declaration under
or declarations filed during the grace pe- section 15.
riod. If the affidavit or declaration is The affidavit or declaration in ac-
filed during the six-month grace period cordance with § 2.20 provided by section
provided by section 8(a)(3) of the Act, 15 of the Act for acquiring incontest-
deficiencies may be corrected before ability for a mark registered on the
the expiration of the grace period with- Principal Register or a mark registered
out paying a deficiency surcharge. De- under the Trademark Act of 1881 or 1905
ficiencies may be corrected after the and published under section 12(c) of the
expiration of the grace period with Act (see § 2.153) must:
payment of the deficiency surcharge (a) Be verified;
required by section 8(c) of the Act and (b) Identify the certificate of reg-
§ 2.6. istration by the certificate number and
(b) If the affidavit or declaration is date of registration;
not filed within the time periods set (c) For a trademark, service mark,
forth in section 8 of the Act, the reg- collective trademark, collective serv-
istration will be cancelled. ice mark, and certification mark, re-
[75 FR 35976, June 24, 2010, as amended at 76 cite the goods or services stated in the
FR 69133, Nov. 8, 2011] registration on or in connection with
which the mark has been in continuous
§ 2.165 Petition to Director to review use in commerce for a period of five
refusal. years after the date of registration or
(a) A response to the examiner’s ini- date of publication under section 12(c)
tial refusal to accept an affidavit or of the Act, and is still in use in com-
declaration is required before filing a merce; for a collective membership
petition to the Director, unless the ex- mark, describe the nature of the own-
aminer directs otherwise. See § 2.163(b) er’s collective membership organiza-
for the deadline for responding to an tion specified in the registration in
examiner’s Office action. connection with which the mark has
(b) If the examiner maintains the re- been in continuous use in commerce for
fusal of the affidavit or declaration, a period of five years after the date of
the owner may file a petition to the Di- registration or date of publication
334
under section 12(c) of the Act, and is affidavit or declaration with a new fil-
still in use in commerce; ing fee.
(d) Specify that there has been no (Sec. 15, 60 Stat. 433; 15 U.S.C. 1065; 35 U.S.C.
final decision adverse to the owner’s 6; 15 U.S.C. 1113, 1123)
claim of ownership of such mark for [30 FR 13193, Oct. 16, 1965, as amended at 47
such goods, services, or collective FR 41282, Sept. 17, 1982; 64 FR 48925, Sept. 8,
membership organization, or to the 1999; 73 FR 67773, Nov. 17, 2008; 74 FR 54910,
owner’s right to register the same or to Oct. 26, 2009; 80 FR 33188, June 11, 2015]
keep the same on the register;
§ 2.168 Affidavit or declaration under
(e) Specify that there is no pro- section 15 combined with affidavit
ceeding involving said rights pending or declaration under sections 8 or
in the Office or in a court and not fi- 71, or with renewal application.
nally disposed of; (a) The affidavit or declaration filed
(f) Be filed within one year after the under section 15 of the Act may also be
expiration of any five-year period of used as the affidavit or declaration re-
continuous use following registration quired by section 8, if the affidavit or
or publication under section 12(c) of declaration meets the requirements of
the Act; and both sections 8 and 15. The affidavit or
(g) Include the fee required by § 2.6 declaration filed under section 15 of the
for each class to which the affidavit or Act may also be used as the affidavit or
declaration pertains in the registra- declaration required by section 71, if
tion. If no fee, or a fee insufficient to the affidavit or declaration meets the
cover at least one class, is filed at an requirements of both sections 71 and 15.
appropriate time, the affidavit or dec- (b) The affidavit or declaration filed
laration will not be refused if the re- under section 15 of the Act may be
quired fee(s) (see § 2.6) is filed in the Of- combined with an application for re-
fice within the time limit set forth in newal of a registration under section 9
the notification of this defect by the of the Act, if the requirements of both
sections 9 and 15 are met.
Office. If the submitted fees are insuffi-
cient to cover all classes in the reg- [64 FR 48925, Sept. 8, 1999, as amended at 75
istration, the particular class or class- FR 35976, June 24, 2010]
es to which the affidavit or declaration
CORRECTION, DISCLAIMER, SURRENDER,
pertains should be specified. ETC.
(h) If the affidavit or declaration
fails to satisfy any of the requirements § 2.171 New certificate on change of
in paragraphs (a) through (g) of this ownership.
section, the owner will be notified in (a) Full change of ownership. If the
an Office action that the affidavit or ownership of a registered mark
declaration cannot be acknowledged. If changes, the new owner may request
a response is not received within the that a new certificate of registration
time period provided or does not sat- be issued in the name of the new
isfy the requirements of the Office ac- owner. The assignment or other docu-
tion, the affidavit or declaration will ment changing title must be recorded
be abandoned. in the Office. The request for the new
(i) If the affidavit or declaration sat- certificate must include the fee re-
isfies paragraphs (a) through (g) of this quired by § 2.6(a)(8) and be signed by
section, the Office will issue a notice of the owner of the registration, someone
acknowledgement. with legal authority to bind the owner
(j) An affidavit or declaration may be (e.g., a corporate officer or general
partner of a partnership), or a practi-
abandoned by the owner upon petition
tioner qualified to practice under § 11.14
to the Director under § 2.146 either be-
of this chapter. In a registered exten-
fore or after the notice of acknowledge- sion of protection, the assignment
ment has issued. must be recorded with the Inter-
(k) If an affidavit or declaration is national Bureau of the World Intellec-
abandoned, the owner may file a new tual Property Organization before it
can be recorded in the Office (see § 7.22).
335
§ 2.172 37 CFR Ch. I (7–1–16 Edition)
(b) Partial change of ownership. (1) In § 2.172 Surrender for cancellation.

a registration resulting from an appli-
Upon application by the owner, the
cation based on section 1 or section 44
Director may permit any registration
of the Act, if ownership of a registra-
to be surrendered for cancellation. The
tion has changed with respect to some application for surrender must be
but not all of the goods and/or services, signed by the owner of the registration,
the owner(s) may file a request that someone with legal authority to bind
the registration be divided into two or the owner (e.g., a corporate officer or
more separate registrations. The as- general partner of a partnership), or a
signment or other document changing practitioner qualified to practice under
title must be recorded in the Office. § 11.14 of this chapter. When a registra-
The request to divide must include the tion has more than one class, one or
fee required by § 2.6(a)(8) for each new more entire class(es) but fewer than
registration created by the division, the total number of classes may be sur-
and be signed by the owner of the reg- rendered. Deletion of fewer than all the
istration, someone with legal authority goods or services in a single class con-
to bind the owner (e.g., a corporate of- stitutes amendment of the registration
ficer or general partner of a partner- as to that class (see § 2.173), rather than
ship), or a practitioner qualified to surrender. A surrender for cancellation
practice under § 11.14 of this chapter, in may not subsequently be withdrawn.
accordance with § 2.193(e)(2) of this
[80 FR 2312, Jan. 16, 2015]
chapter.
(2)(i) When the International Bureau § 2.173 Amendment of registration.
of the World Intellectual Property Or-
ganization notifies the Office that an (a) Form of amendment. The owner of
international registration has been di- a registration may apply to amend a
vided as the result of a change of own- registration or to disclaim part of the
ership with respect to some but not all mark in the registration. The owner
of the goods and/or services, the Office must submit a written request speci-
will construe the International Bu- fying the amendment or disclaimer. If
the registration is involved in an inter
reau’s notice as a request to divide.
partes proceeding before the Trademark
The Office will update Office records to
Trial and Appeal Board, the request
reflect the change in ownership, divide
must be filed by appropriate motion to
out the assigned goods and/or services
the Board.
from the registered extension of pro-
(b) Requirements for request. A request
tection (parent registration), and pub-
for amendment or disclaimer must:
lish notice of the parent registration in
the Official Gazette. (1) Include the fee required by § 2.6;
(ii) The Office will create a new reg- (2) Be verified and signed in accord-
ance with § 2.193(e)(6); and
istration number for the child registra-
tion, and enter the information about (3) If the amendment involves a
the new registration in its automated change in the mark: one new specimen
records. The Office will notify the new per class showing the mark as used on
owner that the new owner must pay or in connection with the goods, serv-
ices, or collective membership organi-
the fee required by § 2.6 to obtain a new
zation; a verified statement that the
registration certificate for the child
specimen was in use in commerce at
registration. It is not necessary for the
least as early as the filing date of the
new owner to file a separate request to
amendment; and a new drawing of the
divide.
amended mark. When requested by the
(iii) The Office will not divide a reg- Office, additional specimens must be
istered extension of protection unless provided.
the International Bureau notifies the (4) The Office may require the owner
Office that the international registra- to furnish such specimens, informa-
tion has been divided. tion, exhibits, and affidavits or dec-
larations as may be reasonably nec-

FR 54910, Oct. 26, 2009; 80 FR 2312, Jan. 16, essary to the proper examination of the
2015] amendment.
336
(c) Registration must still contain reg- by the Director, without charge. There-
istrable matter. The registration as after, the corrected certificate shall
amended must still contain registrable have the same effect as if it had been
matter, and the mark as amended must originally issued in the corrected form.
be registrable as a whole. In the discretion of the Director, the
(d) Amendment may not materially alter Office may issue a new certificate of
the mark. An amendment or disclaimer registration without charge.
that materially alters the character of
the mark will not be permitted, in ac- [73 FR 67774, Nov. 17, 2008]
cordance with section 7(e) of the Act.
§ 2.175 Correction of mistake by
(e) Amendment of identification of owner.
goods, services, or collective membership
organization. No amendment in the (a) Whenever a mistake has been
identification of goods or services, or made in a registration and a showing
description of the nature of the collec- has been made that the mistake oc-
tive membership organization, in a reg- curred in good faith through the fault
istration will be permitted except to of the owner, the Director may issue a
restrict the identification or to change certificate of correction. In the discre-
it in ways that would not require re- tion of the Director, the Office may
publication of the mark. issue a new certificate upon payment
(f) Amendment of certification statement of the required fee, provided that the
for certification marks. An amendment correction does not involve such
of the certification statement specified changes in the registration as to re-
in § 2.45(a)(4)(i)(A) or (a)(4)(ii)(A) that quire republication of the mark.
would materially alter the certifi- (b) An application for such action
cation statement will not be permitted, must:
in accordance with section 7(e) of the (1) Include the following:
Act. (i) Specification of the mistake for
(g) Conforming amendments may be re- which correction is sought;
quired. If the registration includes a (ii) Description of the manner in
disclaimer, description of the mark, or which it arose; and
other miscellaneous statement, any re- (iii) A showing that it occurred in
quest to amend the registration must good faith;
include a request to make any nec- (2) Be verified; and
essary conforming amendments to the
(3) Be accompanied by the required
disclaimer, description, or other state-
fee.
ment.
(h) Elimination of disclaimer. No (Sec. 7, 60 Stat. 430, as amended; 15 U.S.C.
amendment seeking the elimination of 1057)
a disclaimer will be permitted, unless [30 FR 13193, Oct. 16, 1965, as amended at 31
deletion of the disclaimed portion of FR 5262, Apr. 1, 1966; 69 FR 51364, Aug. 19,
the mark is also sought. 2004; 73 FR 67774, Nov. 17, 2008; 80 FR 33189,
(i) No amendment to add or delete sec- June 11, 2015]
tion 2(f) claim of acquired distinctiveness.
An amendment seeking the addition or § 2.176 Consideration of above matters.
deletion of a claim of acquired distinc- The matters in §§ 2.171 to 2.175 will be
tiveness will not be permitted. considered in the first instance by the
[73 FR 67774, Nov. 17, 2008, as amended at 77 Post Registration examiners, except
FR 30207, May 22, 2012; 80 FR 33189, June 11, for requests to amend registrations in-
2015] volved in inter partes proceedings before
the Trademark Trial and Appeal Board,
§ 2.174 Correction of Office mistake. as specified in § 2.173(a), which shall be
Whenever Office records clearly dis- considered by the Board. If an action of
close a material mistake in a registra- the examiner is adverse, the owner of
tion, incurred through the fault of the the registration may petition the Di-
Office, the Office will issue a certifi- rector to review the action under
cate of correction stating the fact and § 2.146. If the owner does not respond to
nature of the mistake, signed by the an adverse action of the examiner

Director or by an employee designated within six months of the date of
337
§ 2.181 37 CFR Ch. I (7–1–16 Edition)
issuance, the matter will be considered this period, the registration will ex-
abandoned. pire.
[73 FR 67774, Nov. 17, 2008] [64 FR 48926, Sept. 8, 1999]
TERM AND RENEWAL § 2.183 Requirements for a complete

renewal application.
AUTHORITY: Secs. 2.181 to 2.184 also issued A complete renewal application must
under sec. 9, 60 Stat. 431; 15 U.S.C. 1059.
include:
§ 2.181 Term of original registrations (a) A request for renewal of the reg-
and renewals. istration, signed by the registrant or
(a)(1) Subject to the provisions of the registrant’s representative;
section 8 of the Act requiring an affi- (b) The fee required by § 2.6 for each
davit or declaration of continued use or class;
excusable nonuse, registrations issued (c) The additional fee required by § 2.6
or renewed prior to November 16, 1989, for each class if the renewal applica-
whether on the Principal Register or tion is filed during the six-month grace
on the Supplemental Register, remain period set forth in section 9(a) of the
in force for twenty years from their Act;
date of issue or the date of renewal, (d) If the renewal application covers
and may be further renewed for periods less than all the goods, services, or
of ten years, unless previously can- classes in the registration, then a list
celled or surrendered. specifying the particular goods, serv-
(2) Subject to the provisions of sec- ices, or classes to be renewed.
tion 8 of the Act requiring an affidavit (e) If at least one fee is submitted for
or declaration of continued use or ex- a multiple-class registration, but the
cusable nonuse, registrations issued or fee is insufficient to cover all the class-
renewed on or after November 16, 1989, es and the class(es) to which the fee(s)
whether on the Principal Register or should be applied are not specified, the
on the Supplemental Register, remain Office will issue a notice requiring ei-
in force for ten years from their date of ther the submission of additional fee(s)
issue or the date of renewal, and may or an indication of the class(es) to
be further renewed for periods of ten which the original fee(s) should be ap-
years, unless previously cancelled or plied. Additional fee(s) may be sub-
surrendered. mitted if the requirements of § 2.185 are
(b) Registrations issued under the met. If the required fee(s) are not sub-
Acts of 1905 and 1881 remain in force for mitted and the class(es) to which the
their unexpired terms and may be re- original fee(s) should be applied are not
newed in the same manner as registra- specified, the Office will presume that
tions under the Act of 1946. the fee(s) cover the classes in ascend-
(c) Registrations issued under the ing order, beginning with the lowest
Act of 1920 cannot be renewed unless numbered class.
renewal is required to support foreign (f) Renewals of registrations issued
registrations and in such case may be under a prior classification system will
renewed on the Supplemental Register be processed on the basis of that sys-
in the same manner as registrations tem, unless the registration has been
under the Act of 1946. amended to adopt international classi-
fication pursuant to § 2.85(e)(3).
FR 37597, Sept. 11, 1989; 64 FR 48926, Sept. 8, [64 FR 48926, Sept. 8, 1999, as amended at 67
1999] FR 79523, Dec. 30, 2002; 73 FR 67775, Nov. 17,
2008; 80 FR 33189, June 11, 2015]
§ 2.182 Time for filing renewal applica-
tion. § 2.184 Refusal of renewal.
An application for renewal must be (a) If the renewal application is not
filed within one year before the expira- acceptable, the Office will issue a no-
tion date of the registration, or within tice stating the reason(s) for refusal.
the six-month grace period after the (b)(1) The registrant must file a re-
expiration date of the registration. If sponse to the refusal of renewal within

no renewal application is filed within six months of the date of issuance of
338
the Office action, or before the expira- in section 9(a) of the Act, the registra-
tion date of the registration, whichever tion will expire. This deficiency cannot
is later. If no response is filed within be cured.
this time period, the registration will
expire, unless time remains in the FR 2312, Jan. 16, 2015]
grace period under section 9(a) of the
Act. If time remains in the grace pe- § 2.186 Petition to Director to review
riod, the registrant may file a com- refusal of renewal.
plete new renewal application. (a) A response to the examiner’s ini-
(2) The response must be signed by tial refusal of the renewal application
the registrant, someone with legal au- is required before filing a petition to
thority to bind the registrant (e.g., a the Director, unless the examiner di-
corporate officer or general partner of rects otherwise. See § 2.184(b) for the
a partnership), or a practitioner who deadline for responding to an exam-
meets the requirements of § 11.14 of this iner’s Office action.
chapter, in accordance with the re- (b) If the examiner maintains the re-
quirements of § 2.193(e)(2). fusal of the renewal application, a peti-
(c) If the renewal application is not tion to the Director to review the re-
filed within the time periods set forth fusal may be filed. The petition must
in section 9(a) of the Act, the registra- be filed within six months of the date
tion will expire. of issuance of the Office action main-
[64 FR 48926, Sept. 8, 1999, as amended at 73 taining the refusal, or the renewal ap-
FR 67775, Nov. 17, 2008; 74 FR 54910, Oct. 26, plication will be abandoned and the
2009] registration will expire.
(c) A decision by the Director is nec-
§ 2.185 Correcting deficiencies in re-
newal application. essary before filing an appeal or com-
mencing a civil action in any court.
(a) If the renewal application is filed
within the time periods set forth in [64 FR 48926, Sept. 8, 1999, as amended at 73
FR 67775, Nov. 17, 2008]
section 9(a) of the Act, deficiencies
may be corrected after notification GENERAL INFORMATION AND
from the Office, as follows: CORRESPONDENCE IN TRADEMARK CASES
(1) Correcting deficiencies in renewal
applications filed within one year before SOURCE: 68 FR 48289, Aug. 13, 2003, unless
the expiration date of the registration. If otherwise noted.
the renewal application is filed within
one year before the expiration date of §§ 2.188–2.189 [Reserved]
the registration, deficiencies may be
corrected before the expiration date of § 2.190 Addresses for trademark cor-
the registration without paying a defi- respondence with the United States
ciency surcharge. Deficiencies may be Patent and Trademark Office.
corrected after the expiration date of (a) Trademark correspondence. In gen-
the registration with payment of the eral. All trademark-related documents
deficiency surcharge required by sec- filed on paper, except documents sent
tion 9(a) of the Act and § 2.6. to the Assignment Services Division
(2) Correcting deficiencies in renewal for recordation; requests for copies of
applications filed during the grace period. trademark documents; and certain doc-
If the renewal application is filed dur- uments filed under the Madrid Protocol
ing the six-month grace period, defi- as specified in paragraph (e) of this sec-
ciencies may be corrected before the tion, should be addressed to: Commis-
expiration of the grace period without sioner for Trademarks, P.O. Box 1451,
paying a deficiency surcharge. Defi- Alexandria, VA 22313–1451. All trade-
ciencies may be corrected after the ex- mark-related documents may be deliv-
piration of the grace period with pay- ered by hand, during the hours the Of-
ment of the deficiency surcharge re- fice is open to receive correspondence,
quired by section 9(a) of the Act and to the Trademark Assistance Center,
§ 2.6. James Madison Building—East Wing,
(b) If the renewal application is not Concourse Level, 600 Dulany Street, Al-
filed within the time periods set forth exandria, Virginia 22314.
339
§ 2.191 37 CFR Ch. I (7–1–16 Edition)
(b) Electronic trademark documents. An fice encourages parties to file docu-

applicant may transmit a trademark ments through TEAS wherever pos-
document through TEAS, at http:// sible.
www.uspto.gov.
(c) Trademark assignments. Requests § 2.192 Business to be conducted with
to record documents in the Assignment decorum and courtesy.
Services Division may be filed through Trademark applicants, registrants,
the Office’s web site, at http:// and parties to proceedings before the
www.uspto.gov. Paper documents and Trademark Trial and Appeal Board and
cover sheets to be recorded in the As- their attorneys or agents are required
signment Services Division should be to conduct their business with decorum
addressed to: Mail Stop Assignment and courtesy. Documents presented in
Recordation Services, Director of the violation of this requirement will be
United States Patent and Trademark submitted to the Director and will be
Office, P.O. Box 1450, Alexandria, Vir- returned by the Director’s direct order.
ginia 22313–1450. See § 3.27 of this chap- Complaints against trademark exam-
ter. ining attorneys and other employees
(d) Requests for copies of trademark must be made in correspondence sepa-
documents. Copies of trademark docu- rate from other documents.
ments can be ordered through the Of-
fice’s web site at www.uspto.gov. Paper § 2.193 Trademark correspondence
requests for certified or uncertified and signature requirements.
copies of trademark documents should (a) Signature required. Each piece of
be addressed to: Mail Stop Document correspondence that requires a signa-
Services, Director of the United States ture must bear:
Patent and Trademark Office, P.O. Box (1) A handwritten signature person-
1450, Alexandria, Virginia 22313–1450. ally signed in permanent ink by the
(e) Certain Documents Relating to person named as the signatory, or a
International Applications and Registra- true copy thereof; or
tions. International applications under (2) An electronic signature that
§ 7.11, subsequent designations under meets the requirements of paragraph
§ 7.21, responses to notices of irregu- (c) of this section, personally entered
larity under § 7.14, requests to record by the person named as the signatory.
changes in the International Register The Office will accept an electronic
under § 7.23 and § 7.24, requests to note signature that meets the requirements
replacements under § 7.28, requests for of paragraph (c) of this section on cor-
transformation under § 7.31, and peti- respondence filed on paper, by fac-
tions to the Director to review an ac- simile transmission (§ 2.195(c)), or
tion of the Office’s Madrid Processing through TEAS or ESTTA.
Unit, when filed by mail, must be (b) Copy of original signature. If a
mailed to: Madrid Processing Unit, 600 copy, such as a photocopy or facsimile
Dulany Street, MDE–7B87, Alexandria, copy of an original signature is filed,
VA 22314–5793. the filer should retain the original as
[68 FR 48289, Aug. 13, 2003, as amended at 69 evidence of authenticity. If a question
FR 57184, Sept. 24, 2004; 69 FR 63321, Nov. 1, of authenticity arises, the Office may
2004; 72 FR 18908, Apr. 16, 2007] require submission of the original.
(c) Requirements for electronic signa-
§ 2.191 Business to be transacted in ture. A person signing a document elec-
writing. tronically must:
All business with the Office should be (1) Personally enter any combination
transacted in writing. The personal ap- of letters, numbers, spaces and/or punc-
pearance of applicants or their rep- tuation marks that he or she has
resentatives at the Office is unneces- adopted as a signature, placed between
sary. The action of the Office will be two forward slash (‘‘/’’) symbols in the
based exclusively on the written signature block on the electronic sub-
record. No attention will be paid to any mission; or
alleged oral promise, stipulation, or (2) Sign the document using some
understanding in relation to which other form of electronic signature

there is disagreement or doubt. The Of- specified by the Director.
340
(d) Signatory must be identified. The partnership) must sign. In the case of
name of the person who signs a docu- joint owners who are not represented
ment in connection with a trademark by a qualified practitioner, all must
application, registration, or proceeding sign.
before the Trademark Trial and Appeal (3) Powers of attorney and revocations
Board must be set forth in printed or of powers of attorney. Powers of attor-
typed form immediately below or adja- ney and revocations of powers of attor-
cent to the signature, or identified ney must be signed by the individual
elsewhere in the filing (e.g., in a cover applicant, registrant or party to a pro-
letter or other document that accom- ceeding pending before the Office, or by
panies the filing). someone with legal authority to bind
(e) Proper person to sign. Documents the applicant, registrant, or party (e.g.,
filed in connection with a trademark a corporate officer or general partner
application or registration must be of a partnership). In the case of joint
signed by a proper person. Unless oth- applicants, registrants, or parties, all
erwise specified by law, the following must sign. Once the applicant, reg-
requirements apply: istrant or party has designated a quali-
(1) Verified statement of facts. A fied practitioner(s), the named practi-
verified statement in support of an ap- tioner may sign an associate power of
plication for registration, amendment attorney appointing another qualified
to an application for registration, alle- practitioner(s) as an additional per-
gation of use under § 2.76 or § 2.88, re- son(s) authorized to prosecute the ap-
quest for extension of time to file a plication or registration. If the appli-
statement of use under § 2.89, or an affi- cant, registrant, or party revokes the
davit under section 8, 12(c), 15, or 71 of original power of attorney, the revoca-
the Act must satisfy the requirements tion discharges any associate power
of § 2.2(n), and be signed by the owner signed by the practitioner whose power
or a person properly authorized to sign has been revoked. If the practitioner
on behalf of the owner. A person who is who signed an associate power with-
properly authorized to verify facts on draws, the withdrawal discharges any
behalf of an owner is: associate power signed by the with-
(2) Responses, amendments to applica- drawing practitioner upon acceptance
tions, requests for express abandonment, of the request for withdrawal by the
requests for reconsideration of final ac- Office.
tions, and requests to divide. Responses (4) Petitions to revive under § 2.66. A pe-
to Office actions, amendments to appli- tition to revive under § 2.66 must be
cations, requests for express abandon- signed by someone with firsthand
ment, requests for reconsideration of knowledge of the facts regarding unin-
final actions, and requests to divide tentional delay.
must be signed by the owner of the ap- (5) Petitions to Director under § 2.146. A
plication or registration, someone with petition to the Director under § 2.146
legal authority to bind the owner (e.g., must be signed by the petitioner, some-
a corporate officer or general partner one with legal authority to bind the pe-
of a partnership), or a practitioner titioner (e.g., a corporate officer or
qualified to practice under § 11.14 of general partner of a partnership), or a
this chapter, in accordance with the practitioner qualified to practice under
following guidelines: § 11.14 of this chapter, in accordance
(i) If the owner is represented by a with the following guidelines:
practitioner qualified to practice be- (i) If the petitioner is represented by
fore the Office under § 11.14 of this a practitioner qualified to practice be-
chapter, the practitioner must sign, ex- fore the Office under § 11.14 of this
cept where the owner is required to chapter, the practitioner must sign; or
sign the correspondence; or (ii) If the petitioner is not rep-
(ii) If the owner is not represented by resented by a practitioner authorized
a practitioner qualified to practice to practice before the Office under
under § 11.14 of this chapter, the indi- § 11.14 of this chapter, the individual
vidual owner or someone with legal au- petitioner or someone with legal au-
thority to bind the owner (e.g., a cor- thority to bind the petitioner (e.g., a
porate officer or general partner of a corporate officer or general partner of
341
§ 2.194 37 CFR Ch. I (7–1–16 Edition)
a partnership) must sign. In the case of sign a cover letter or transmittal let-
joint petitioners, all must sign. ter. The Office neither requires cover
(6) Requests for correction, amendment letters nor questions the authority of a
or surrender of registrations. A request person who signs a communication
for correction, amendment or sur- that merely transmits paper docu-
render of a registration must be signed ments.
by the owner of the registration, some- (f) Signature as certification. The pres-
one with legal authority to bind the entation to the Office (whether by sign-
owner (e.g., a corporate officer or gen- ing, filing, submitting, or later advo-
eral partner of a partnership), or a cating) of any document by any person,
practitioner qualified to practice be- whether a practitioner or non-practi-
fore the Office under § 11.14 of this tioner, constitutes a certification
chapter. In the case of joint owners under § 11.18(b) of this chapter. Viola-
who are not represented by a qualified tions of § 11.18(b) of this chapter may
practitioner, all must sign. jeopardize the validity of the applica-
(7) Renewal applications. A renewal tion or registration, and may result in
application must be signed by the reg- the imposition of sanctions under
istrant or the registrant’s representa- § 11.18(c) of this chapter. Any practi-
tive. tioner violating § 11.18(b) of this chap-
(8) Designations and revocations of do- ter may also be subject to disciplinary
mestic representative. A designation or action. See § 11.18(d) and § 11.804 of this
revocation of a domestic representa- chapter.
tive must be signed by the applicant or (g) Separate copies for separate files. (1)
registrant, someone with legal author- Since each file must be complete in
ity to bind the applicant or registrant itself, a separate copy of every docu-
(e.g., a corporate officer or general ment to be filed in connection with a
partner of a partnership), or a practi- trademark application, registration, or
tioner qualified to practice under § 11.14 inter partes proceeding must be fur-
of this chapter. In the case of joint ap- nished for each file to which the docu-
plicants or registrants, all must sign. ment pertains, even though the con-
(9) Requests to change correspondence tents of the documents filed in mul-
address in an application or registration. tiple files may be identical.
A notice of change of correspondence (2) Parties should not file duplicate
address in an application or registra- copies of correspondence in a single ap-
tion must be signed by the applicant or plication, registration, or proceeding
registrant, someone with legal author- file, unless the Office requires the fil-
ity to bind the applicant or registrant ing of duplicate copies. The Office may
(e.g., a corporate officer or general dispose of duplicate copies of cor-
partner of a partnership), or a practi- respondence.
tioner qualified to practice under § 11.14 (h) Separate documents for separate
of this chapter, in accordance with the branches of the Office. Since different
following guidelines: branches or sections of the Office may
(i) If the applicant or registrant is consider different matters, each dis-
represented by a practitioner qualified tinct subject, inquiry or order must be
to practice before the Office under contained in a separate document to
§ 11.14 of this chapter, the practitioner avoid confusion and delay in answering
must sign; or correspondence.
(ii) If the applicant or registrant is (i) Certified documents required by stat-
not represented by a practitioner quali- ute. When a statute requires that a doc-
fied to practice before the Office under ument be certified, a copy or facsimile
§ 11.14, the individual applicant or reg- transmission of the certification is not
istrant or someone with legal author- acceptable.
ity to bind the applicant or registrant [74 FR 54910, Oct. 26, 2009, as amended at 80
(e.g., a corporate officer or general FR 33189, June 11, 2015]
partner of a partnership) must sign. In
the case of joint applicants or joint § 2.194 Identification of trademark ap-
registrants, all must sign. plication or registration.
(10) Cover letters. A person transmit- (a) No correspondence relating to a

ting paper documents to the Office may trademark application should be filed
342
prior to receipt of the application se- account, may be transmitted by fac-

rial number. simile. The receipt date accorded to
(b) (1) A letter about a trademark ap- the correspondence will be the date on
plication should identify the serial which the complete transmission is re-
number, the name of the applicant, and ceived in the Office, unless that date is
the mark. a Saturday, Sunday, or Federal holiday
(2) A letter about a registered trade- within the District of Columbia. See
mark should identify the registration § 2.196. To facilitate proper processing,
number, the name of the registrant, each transmission session should be
and the mark. limited to correspondence to be filed in
a single application, registration or
§ 2.195 Receipt of trademark cor- proceeding before the Office. The appli-
respondence. cation serial number, registration
(a) Date of receipt and Priority Mail number, or proceeding number should
Express® date of deposit. Trademark cor- be entered as a part of the sender’s
respondence received in the Office is identification on a facsimile cover
given a filing date as of the date of re- sheet.
ceipt except as follows: (d) Facsimile transmissions are not
(1) The Office is not open for the fil- permitted and if submitted, will not be
ing of correspondence on any day that accorded a date of receipt, in the fol-
is a Saturday, Sunday, or Federal holi- lowing situations:
day within the District of Columbia. (1) Applications for registration of
Except for correspondence transmitted marks;
electronically under paragraph (a)(2) of (2) Drawings submitted under § 2.51,
this section or transmitted by fac- § 2.52, § 2.72, or § 2.173;
simile under paragraph (a)(3) of this (3) Correspondence to be filed with
section, no correspondence is received the Trademark Trial and Appeal Board,
in the Office on Saturdays, Sundays, or except notices of ex parte appeal;
Federal holidays within the District of (4) Requests for cancellation or
Columbia. amendment of a registration under sec-
(2) Trademark-related correspond- tion 7(e) of the Trademark Act; and
ence transmitted electronically will be certificates of registration surrendered
given a filing date as of the date on for cancellation or amendment under
which the Office receives the trans- section 7(e) of the Trademark Act; and
mission. (5) Madrid-related correspondence
(3) Correspondence transmitted by submitted under § 7.11, § 7.21, § 7.14,
facsimile will be given a filing date as § 7.23, § 7.24, or § 7.31.
of the date on which the complete (e) Interruptions in U.S. Postal Service.
transmission is received in the Office (1) If the Director designates a postal
unless that date is a Saturday, Sunday, service interruption or emergency
or Federal holiday within the District within the meaning of 35 U.S.C. 21(a),
of Columbia, in which case the filing any person attempting to file cor-
date will be the next succeeding day respondence by Priority Mail Express®
that is not a Saturday, Sunday, or Fed- Post Office to Addressee service who
eral holiday within the District of Co- was unable to deposit the correspond-
lumbia. ence with the United States Postal
(4) Correspondence filed in accord- Service due to the interruption or
ance with § 2.198 will be given a filing emergency may petition the Director
date as of the date of deposit as Pri- to consider such correspondence as
ority Mail Express® with the United filed on a particular date in the Office.
States Postal Service. (2) The petition must:
(b) Correspondence delivered by hand. (i) Be filed promptly after the ending
Correspondence may be delivered by of the designated interruption or emer-
hand during hours the Office is open to gency;
receive correspondence. (ii) Include the original correspond-
(c) Facsimile transmission. Except in ence or a copy of the original cor-
the cases enumerated in paragraph (d) respondence; and
of this section, correspondence, includ- (iii) Include a statement that the cor-
ing authorizations to charge a deposit respondence would have been deposited
343
§ 2.196 37 CFR Ch. I (7–1–16 Edition)
with the United States Postal Service basis to expect that the correspondence
on the requested filing date but for the would be mailed or transmitted on or
designated interruption or emergency before the date indicated.
in Priority Mail Express® service; and (2) The procedure described in para-
that the correspondence attached to graph (a)(1) of this section does not
the petition is the original correspond- apply to:
ence or a true copy of the correspond- (i) Applications for the registration
ence originally attempted to be depos- of marks under 15 U.S.C. 1051 or 1126;
ited as Priority Mail Express® on the and
requested filing date. (ii) Madrid-related correspondence
(3) Paragraphs (e)(1) and (e)(2) of this filed under § 7.11, § 7.21, § 7.14, § 7.23, § 7.24
section do not apply to correspondence or § 7.31 of this title.
that is excluded from the Priority Mail (b) In the event that correspondence
Express® procedure pursuant to is considered timely filed by being
§ 2.198(a)(1). mailed or transmitted in accordance
[79 FR 63041, Oct. 22, 2014] with paragraph (a) of this section, but
not received in the Office, and an appli-
§ 2.196 Times for taking action: Expira- cation is abandoned, a registration is
tion on Saturday, Sunday or Fed- cancelled or expired, or a proceeding is
eral holiday. dismissed, terminated, or decided with
Whenever periods of time are speci- prejudice, the correspondence will be
fied in this part in days, calendar days considered timely if the party who for-
are intended. When the day, or the last warded such correspondence:
day fixed by statute or by regulation (1) Informs the Office of the previous
under this part for taking any action mailing or transmission of the cor-
or paying any fee in the Office falls on respondence within two months after
a Saturday, Sunday, or Federal holiday becoming aware that the Office has no
within the District of Columbia, the evidence of receipt of the correspond-
action may be taken, or the fee paid, ence;
on the next succeeding day that is not (2) Supplies an additional copy of the
a Saturday, Sunday, or a Federal holi- previously mailed or transmitted cor-
day. respondence and certificate; and
(3) Includes a statement that attests
§ 2.197 Certificate of mailing or trans-
mission. on a personal knowledge basis or to the
satisfaction of the Director to the pre-
(a) Except in the cases enumerated in vious timely mailing or transmission.
paragraph (a)(2) of this section, cor- If the correspondence was sent by fac-
respondence required to be filed in the simile transmission, a copy of the send-
Office within a set period of time will ing unit’s report confirming trans-
be considered as being timely filed if mission may be used to support this
the procedure described in this section statement.
is followed. The actual date of receipt (c) The Office may require additional
will be used for all other purposes. evidence to determine whether the cor-
(1) Correspondence will be considered respondence was timely filed.
as being timely filed if:
(i) The correspondence is mailed or [68 FR 48289, Aug. 13, 2003, as amended at 69
transmitted prior to expiration of the FR 57185, Sept. 24, 2004]
set period of time by being:
(A) Addressed as set out in § 2.190 and § 2.198 Filing of correspondence by
deposited with the U.S. Postal Service Priority Mail Express®.
with sufficient postage as first class (a)(1) Except for documents listed in
mail; or paragraphs (a)(1)(i) through (vii) of this
(B) Transmitted by facsimile to the section, any correspondence received
Office in accordance with § 2.195(c); and by the Office that was delivered by the
(ii) The correspondence includes a Priority Mail Express® Post Office to
certificate for each piece of correspond- Addressee service of the United States
ence stating the date of deposit or Postal Service (USPS) will be consid-
transmission. The person signing the ered filed with the Office on the date of
certificate should have a reasonable deposit with the USPS. The Priority
344
Mail Express® procedure does not apply the ‘‘date accepted’’ on the Priority
to: Mail Express® mailing label or other
(i) Applications for registration of official USPS notation, provided that:
marks; (1) The petition is filed within two
(ii) Amendments to allege use under months after the person becomes aware
section 1(c) of the Act; that the Office has accorded, or will ac-
(iii) Statements of use under section cord, a filing date other than the USPS
1(d) of the Act; deposit date;
(iv) Requests for extension of time to (2) The number of the Priority Mail
file a statement of use under section Express® mailing label was placed on
1(d) of the Act; the paper(s) or fee(s) that constitute
(v) Affidavits of continued use under the correspondence prior to the origi-
section 8 of the Act; nal mailing; and
(vi) Renewal requests under section 9 (3) The petition includes a true copy
of the Act; of the Priority Mail Express® mailing
(vii) Requests to change or correct label showing the ‘‘date accepted,’’ and
addresses; and of any other official notation by the
(viii) Affidavits of use under section USPS relied upon to show the date of
71 of the Act. deposit.
(2) The date of deposit with USPS is (d) Any person filing correspondence
shown by the ‘‘date accepted’’ on the under this section that was received by
Priority Mail Express® label or other the Office and delivered by the Priority
official USPS notation. If the USPS de- Mail Express® Post Office to Addressee
posit date cannot be determined, the service of the USPS, who can show
correspondence will be accorded the that the ‘‘date accepted’’ on the Pri-
date of receipt in the Office as the fil- ority Mail Express® mailing label or
ing date. other official notation entered by the
(b) Correspondence should be depos- USPS was incorrectly entered or omit-
ited directly with an employee of the ted by the USPS, may petition the Di-
USPS to ensure that the person depos- rector to accord the correspondence a
iting the correspondence receives a leg- filing date as of the date the cor-
ible copy of the Priority Mail Express® respondence is shown to have been de-
mailing label with the ‘‘date accepted’’ posited with the USPS, provided that:
clearly marked. Persons dealing indi- (1) The petition is filed within two
rectly with the employees of the USPS months after the person becomes aware
(such as by deposit in a Priority Mail that the Office has accorded, or will ac-
Express® drop box) do so at the risk of cord, a filing date based upon an incor-
not receiving a copy of the Priority rect entry by the USPS;
Mail Express® mailing label with the (2) The number of the Priority Mail
desired ‘‘date accepted’’ clearly Express® mailing label was placed on
marked. The paper(s) or fee(s) that the paper(s) or fee(s) prior to the origi-
constitute the correspondence should nal mailing; and
also include the Priority Mail Express® (3) The petition includes a showing
mailing label number thereon. See that establishes, to the satisfaction of
paragraphs (c), (d) and (e) of this sec- the Director, that the correspondence
tion. was deposited in the Priority Mail Ex-
(c) Any person filing correspondence press® Post Office to Addressee service
under this section that was received by prior to the last scheduled pickup on
the Office and delivered by the Priority the requested filing date. Any showing
Mail Express® Post Office to Addressee pursuant to this paragraph must be
service of the USPS, who can show corroborated by evidence from the
that there is a discrepancy between the USPS or evidence that came into being
filing date accorded by the Office to within one business day after the de-
the correspondence and the date of deposit of the correspondence in the Pri-
posit as shown by the ‘‘date accepted’’ ority Mail Express® Post Office to Ad-
on the Priority Mail Express® mailing dressee service of the USPS.
label or other official USPS notation, (e) If correspondence is properly ad-
may petition the Director to accord dressed to the Office pursuant to § 2.190
the correspondence a filing date as of and deposited with sufficient postage
345
§ 2.200 37 CFR Ch. I (7–1–16 Edition)
in the Priority Mail Express® Post Of- TRADEMARK RECORDS AND FILES OF THE
fice to Addressee service of the USPS, PATENT AND TRADEMARK OFFICE
but not received by the Office, the
party who mailed the correspondence SOURCE: 68 FR 48292, Aug. 13, 2003, unless
may petition the Director to consider otherwise noted.
such correspondence filed in the Office
on the USPS deposit date, provided § 2.200 Assignment records open to
that: public inspection.
(1) The petition is filed within two (a)(1) Separate assignment records
months after the person becomes aware are maintained in the Office for pat-
that the Office has no evidence of re- ents and trademarks. The assignment
ceipt of the correspondence; records relating to trademark applica-
(2) The number of the Priority Mail tions and registrations (for assign-
Express® mailing label was placed on ments recorded on or after January 1,
the paper(s) or fee(s) prior to the origi- 1955) are open to public inspection at
nal mailing; the Office, and copies of those assign-
(3) The petition includes a copy of ment records may be obtained upon re-
the originally deposited paper(s) or quest and payment of the fee set forth
fee(s) showing the number of the Pri- in § 2.6 of this chapter.
ority Mail Express® mailing label (2) All records of trademark assign-
thereon, a copy of any returned post- ments recorded before January 1, 1955,
card receipt, a copy of the Priority are maintained by the National Ar-
Mail Express® mailing label showing chives and Records Administration
the ‘‘date accepted,’’ a copy of any (NARA). The records are open to public
other official notation by the USPS re- inspection. Certified and uncertified
lied upon to show the date of deposit, copies of those assignment records are
and, if the requested filing date is a provided by NARA upon request and
date other than the ‘‘date accepted’’ on payment of the fees required by NARA.
the Priority Mail Express® mailing (b) An order for a copy of an assign-
label or other official notation entered ment or other document should iden-
by the USPS, a showing pursuant to tify the reel and frame number where
paragraph (d)(3) of this section that the the assignment or document is re-
correspondence was deposited in the corded. If a document is identified
Priority Mail Express® Post Office to without specifying its correct reel and
Addressee service prior to the last frame, an extra charge as set forth in
scheduled pickup on the requested fil- § 2.6(b)(10) will be made for the time
ing date; and consumed in making a search for such
(4) The petition includes a statement assignment.
that establishes, to the satisfaction of
the Director, the original deposit of the § 2.201 Copies and certified copies.
correspondence and that the copies of (a) Non-certified copies of trademark
the correspondence, the copy of the registrations and of any trademark
Priority Mail Express® mailing label, records or trademark documents with-
the copy of any returned postcard rein the jurisdiction of the Office and
ceipt, and any official notation entered open to the public, will be furnished by
by the USPS are true copies of the the Office to any person entitled there-
originally mailed correspondence, to, upon payment of the appropriate
original Priority Mail Express® mail- fee required by § 2.6.
ing label, returned postcard receipt,
(b) Certified copies of trademark reg-
and official notation entered by the
istrations and of any trademark
USPS.
records or trademark documents with-
(f) The Office may require additional in the jurisdiction of the Office and
evidence to determine whether the cor- open to the public will be authenti-
respondence was deposited as Priority cated by the seal of the Office and cer-
Mail Express® with the USPS on the tified by the Director, or in his or her
date in question. name attested by an officer of the Of-
[79 FR 63041, Oct. 22, 2014, as amended at 80 fice authorized by the Director, upon
FR 2312, Jan. 16, 2015] payment of the fee required by § 2.6.
346
FEES AND PAYMENT OF MONEY IN card information is provided on a form

TRADEMARK CASES or document other than a form pro-
vided by the Office for the payment of
SOURCE: 68 FR 48292, Aug. 13, 2003, unless fees by credit card, the Office will not
otherwise noted. be liable if the credit card number be-
comes public knowledge.
§ 2.206 Trademark fees payable in ad-
vance. [68 FR 48292, Aug. 13, 2003, as amended at 69
(a) Trademark fees and charges pay- FR 43752, July 22, 2004]
able to the Office are required to be
paid in advance; that is, at the time of § 2.208 Deposit accounts.
requesting any action by the Office for (a) For the convenience of attorneys,
which a fee or charge is payable. and the general public in paying any
(b) All fees paid to the Office must be fees due, in ordering copies of records,
itemized in each individual trademark or services offered by the Office, de-
application or registration file, or posit accounts may be established in
trademark proceeding, so that the pur- the Office upon payment of the fee for
pose for which the fees are paid is establishing a deposit account
clear. The Office may return fees that (§ 2.6(b)(13)). A minimum deposit of
are not itemized as required by this $1,000 is required for paying any fees
paragraph.
due or in ordering any services offered
§ 2.207 Methods of payment. by the Office. The Office will issue a
deposit account statement at the end
(a) All payments of money required
of each month. A remittance must be
in trademark cases, including fees for
made promptly upon receipt of the
the processing of international trade-
mark applications and registrations statement to cover the value of items
that are paid through the Office, shall or services charged to the account and
be made in U.S. dollars and in the form thus restore the account to its estab-
of a cashier’s or certified check, Treas- lished normal deposit. An amount suf-
ury note, national bank note, or United ficient to cover all fees, copies, or serv-
States Postal Service money order. If ices requested must always be on de-
sent in any other form, the Office may posit. Charges to accounts with insuffi-
delay or cancel the credit until collec- cient funds will not be accepted. A
tion is made. Checks and money orders service charge (§ 2.6(b)(13)) will be as-
must be made payable to the Director sessed for each month that the balance
of the United States Patent and Trade- at the end of the month is below $1,000.
mark Office. (Checks made payable to (b) A general authorization to charge
the Commissioner of Patents and all fees, or only certain fees to a de-
Trademarks will continue to be accept- posit account containing sufficient
ed.) Payments from foreign countries funds may be filed in an individual ap-
must be payable and immediately ne- plication, either for the entire pend-
gotiable in the United States for the ency of the application or with respect
full amount of the fee required. Money to a particular document filed. An au-
sent to the Office by mail will be at the thorization to charge a fee to a deposit
risk of the sender, and letters con-
account will not be considered pay-
taining money should be registered
ment of the fee on the date the author-
with the United States Postal Service.
(b) Payments of money required for ization to charge the fee is effective as
trademark fees may also be made by to the particular fee to be charged un-
credit card, except for replenishing a less sufficient funds are present in the
deposit account. Payment of a fee by account to cover the fee.
credit card must specify the amount to (c) A deposit account holder may re-
be charged to the credit card and such plenish the deposit account by submit-
other information as is necessary to ting a payment to the Office. A pay-
process the charge, and is subject to ment to replenish a deposit account
collection of the fee. The Office will must be submitted by one of the meth-
not accept a general authorization to ods set forth in paragraphs (c)(1), (c)(2),
charge fees to a credit card. If credit (c)(3), or (c)(4) of this section.
347
§ 2.209 37 CFR Ch. I (7–1–16 Edition)
(1) A payment to replenish a deposit (b) Any request for refund must be
account may be submitted by elec- filed within two years from the date
tronic funds transfer through the Fed- the fee was paid, except as otherwise
eral Reserve Fedwire System, which re- provided in this paragraph. If the Office
quires that the following information charges a deposit account by an
be provided to the deposit account amount other than an amount specifi-
holder’s bank or financial institution: cally indicated in an authorization
(i) Name of the Bank, which is Treas (§ 2.208(b)), any request for refund based
NYC (Treasury New York City); upon such charge must be filed within
(ii) Bank Routing Code, which is two years from the date of the deposit
021030004; account statement indicating such
(iii) United States Patent and Trade- charge, and include a copy of that de-
mark Office account number with the posit account statement. The time pe-
Department of the Treasury, which is riods set forth in this paragraph are
13100001; and not extendable.
(iv) The deposit account holder’s
company name and deposit account
number. PART 3—ASSIGNMENT, RECORD-
(2) A payment to replenish a deposit ING AND RIGHTS OF ASSIGNEE
account may be submitted by elec-
tronic funds transfer over the Office’s EDITORIAL NOTE: Part 3 pertaining to both
Internet Web site (www.uspto.gov). patents and trademarks is placed in the
(3) A payment to replenish a deposit grouping pertaining to patents regulations.
account may be addressed to: Director
of the United States Patent and Trade- PART 4—COMPLAINTS REGARDING
mark Office, Attn: Deposit Accounts,
2051 Jamieson Avenue, Suite 300, Alex-
INVENTION PROMOTERS
andria, Virginia 22314.
EDITORIAL NOTE: Part 4 is placed in the
separate grouping of parts pertaining to pat-
FR 43752, July 22, 2004; 70 FR 56128, Sept. 26,
ents regulations.
2005; 73 FR 67775, Nov. 17, 2008]
§ 2.209 Refunds. PART 5—SECRECY OF CERTAIN IN-

(a) The Director may refund any fee VENTIONS AND LICENSES TO EX-
paid by mistake or in excess of that re- PORT AND FILE APPLICATIONS IN
quired. A change of purpose after the FOREIGN COUNTRIES
payment of a fee, such as when a party
desires to withdraw a trademark appli-
cation, appeal or other trademark fil- EDITORIAL NOTE: Part 5 is placed in the
separate grouping of parts pertaining to pat-
ing for which a fee was paid, will not
ents regulations.
entitle a party to a refund of such fee.
The Office will not refund amounts of
twenty-five dollars or less unless a re- PART 6—CLASSIFICATION OF
fund is specifically requested, and will GOODS AND SERVICES UNDER
not notify the payor of such amounts. THE TRADEMARK ACT
If a party paying a fee or requesting a
refund does not provide the banking in- Sec.
formation necessary for making re- 6.1 International schedule of classes of
funds by electronic funds transfer (31 goods and services.
U.S.C. 3332 and 31 CFR part 208), or in- 6.2 Prior U.S. schedule of classes of goods
struct the Office that refunds are to be and services.
credited to a deposit account, the Di- 6.3 Schedule for certification marks.
rector may require such information, 6.4 Schedule for collective membership
or use the banking information on the marks.
payment instrument to make a refund. AUTHORITY: Secs. 30, 41, 60 Stat. 436, 440; 15
Any refund of a fee paid by credit card
U.S.C. 1112, 1123; 35 U.S.C. 2, unless otherwise

will be by a credit to the credit card noted.
account to which the fee was charged.
348
§ 6.1 International schedule of classes 9. Scientific, nautical, surveying,

of goods and services. photographic, cinematographic, opti-
cal, weighing, measuring, signalling,
GOODS checking (supervision), life-saving and
teaching apparatus and instruments;
1. Chemicals used in industry, science
and photography, as well as in agri- apparatus and instruments for con-
culture, horticulture and forestry; un- ducting, switching, transforming, accu-
processed artificial resins, unprocessed mulating, regulating or controlling
plastics; manures; fire extinguishing electricity; apparatus for recording,
compositions; tempering and soldering transmission or reproduction of sound
preparations; chemical substances for or images; magnetic data carriers, re-
preserving foodstuffs; tanning sub- cording discs; compact discs, DVDs and
stances; adhesives used in industry. other digital recording media; mecha-
nisms for coin-operated apparatus;
2. Paints, varnishes, lacquers; pre-
cash registers, calculating machines,
servatives against rust and against de-
data processing equipment, computers;
terioration of wood; colorants;
computer software; fire-extinguishing
mordants; raw natural resins; metals
apparatus.
in foil and powder form for use in
painting, decorating, printing and art. 10. Surgical, medical, dental and vet-
3. Bleaching preparations and other erinary apparatus and instruments; ar-
substances for laundry use; cleaning, tificial limbs, eyes and teeth; ortho-
polishing, scouring and abrasive prep- pedic articles; suture materials.
arations; soaps; perfumery, essential 11. Apparatus for lighting, heating,
oils, cosmetics, hair lotions; steam generating, cooking, refrig-
dentifrices. erating, drying, ventilating, water sup-
4. Industrial oils and greases; lubri- ply and sanitary purposes.
cants; dust absorbing, wetting and 12. Vehicles; apparatus for loco-
binding compositions; fuels (including motion by land, air or water.
motor spirit) and illuminants; candles 13. Firearms; ammunition and projec-
and wicks for lighting. tiles; explosives; fireworks.
5. Pharmaceuticals, medical and vet- 14. Precious metals and their alloys;
erinary preparations; sanitary prepara- jewellery, precious stones; horological
tions for medical purposes; dietetic and chronometric instruments.
food and substances adapted for med- 15. Musical instruments.
ical use or veterinary use, food for ba- 16. Paper and cardboard; printed mat-
bies; dietary supplements for humans ter; bookbinding material; photo-
and animals; plasters, materials for graphs; stationery; adhesives for sta-
dressings; material for stopping teeth, tionery or household purposes; artists’
dental wax; disinfectants; preparations materials; paintbrushes; typewriters
for destroying vermin; fungicides, her- and office requisites (except furniture);
bicides. instructional and teaching material
6. Common metals and their alloys; (except apparatus); plastic materials
metal building materials; transport- for packaging; printers’ type; printing
able buildings of metal; materials of blocks.
metal for railway tracks; non-electric 17. Unprocessed and semi-processed
cables and wires of common metal; rubber, gutta-percha, gum, asbestos,
ironmongery, small items of metal mica and substitutes for all these ma-
hardware; pipes and tubes of metal; terials; plastics in extruded form for
safes; ores. use in manufacture; packing, stopping
7. Machines and machine tools; mo- and insulating materials; flexible
tors and engines (except for land vehi- pipes, not of metal.
cles); machine coupling and trans- 18. Leather and imitations of leather;
mission components (except for land animal skins, hides; trunks and travel-
vehicles); agricultural implements ling bags; umbrellas and parasols;
other than hand-operated; incubators walking sticks; whips, harness and sad-
for eggs; automatic vending machines. dlery.
8. Hand tools and implements (hand- 19. Building materials (non-metallic);

operated); cutlery; side arms; razors. non-metallic rigid pipes for building;
349
§ 6.2 37 CFR Ch. I (7–1–16 Edition)
asphalt, pitch and bitumen; non-metal- 34. Tobacco; smokers’ articles;

lic transportable buildings; monu- matches.
ments, not of metal.
20. Furniture, mirrors, picture SERVICES
frames; unworked or semi-worked 35. Advertising; business manage-
bone, horn, ivory, whalebone or moth- ment; business administration; office
er-of-pearl; shells; meerschaum; yellow functions.
amber. 36. Insurance; financial affairs; mone-
21. Household or kitchen utensils and tary affairs; real estate affairs.
containers; combs and sponges; brushes 37. Building construction; repair; in-
(except paintbrushes); brush-making stallation services.
materials; articles for cleaning pur- 38. Telecommunications.
poses; steelwool; unworked or semi- 39. Transport; packaging and storage
worked glass (except glass used in of goods; travel arrangement.
building); glassware, porcelain and 40. Treatment of materials.
earthenware. 41. Education; providing of training;
22. Ropes and string; nets; tents, entertainment; sporting and cultural
awnings and tarpaulins; sails; sacks; activities.
padding and stuffing materials (except 42. Scientific and technological serv-
of paper, cardboard, rubber or plastics); ices and research and design relating
raw fibrous textile materials. thereto; industrial analysis and re-
23. Yarns and threads, for textile use. search services; design and develop-
24. Textiles and substitutes for tex- ment of computer hardware and soft-
tiles; bed covers; table covers. ware.
25. Clothing, footwear, headgear. 43. Services for providing food and
26. Lace and embroidery, ribbons and drink; temporary accommodation.
braid; buttons, hooks and eyes, pins 44. Medical services; veterinary serv-
and needles; artificial flowers. ices; hygienic and beauty care for
27. Carpets, rugs, mats and matting, human beings or animals; agriculture,
linoleum and other materials for cov- horticulture and forestry services.
ering existing floors; wall hangings 45. Legal services; security services
(non-textile). for the protection of property and indi-
28. Games and playthings; gymnastic viduals; personal and social services
and sporting articles; decorations for rendered by others to meet the needs of
Christmas trees. individuals.
29. Meat, fish, poultry and game;
meat extracts; preserved, frozen, dried [80 FR 80268, Dec. 24, 2015]
and cooked fruits and vegetables; jel- § 6.2 Prior U.S. schedule of classes of
lies, jams, compotes; eggs; milk and goods and services.
milk products; edible oils and fats.
30. Coffee, tea, cocoa and artificial Class Title
coffee; rice; tapioca and sago; flour and GOODS
preparations made from cereals; bread, 1 Raw or partly prepared materials.
pastries and confectionery; edible ices; 2 Receptacles.
sugar, honey, treacle; yeast, baking- 3 Baggage, animal equipments, portfolios, and pocket
powder; salt; mustard; vinegar, sauces books.
4 Abrasives and polishing materials.
(condiments); spices; ice. 5 Adhesives.
31. Agricultural, horticultural and 6 Chemicals and chemical compositions.
forestry products; raw and unprocessed 7 Cordage.
8 Smokers’ articles, not including tobacco products.
grains and seeds; fresh fruits and vege- 9 Explosives, firearms, equipments, and projectiles.
tables; natural plants and flowers; live 10 Fertilizers.
animals; foodstuffs for animals; malt. 11 Inks and inking materials.
32. Beers; mineral and aerated waters 12 Construction materials.
13 Hardware and plumbing and steamfitting supplies.
and other non-alcoholic beverages; 14 Metals and metal castings and forgings.
fruit beverages and fruit juices; syrups 15 Oils and greases.
and other preparations for making bev- 16 Protective and decorative coatings.
17 Tobacco products.
erages.
18 Medicines and pharmaceutical preparations.

33. Alcoholic beverages (except 19 Vehicles.
beers). 20 Linoleum and oiled cloth.
350
Class Title Class Title
21 Electrical apparatus, machines, and supplies. 200 ............................... Collective Membership.

22 Games, toys, and sporting goods.
23 Cutlery, machinery, and tools, and parts thereof.
24 Laundry appliances and machines. [73 FR 67775, Nov. 17, 2008]
25 Locks and safes.
26 Measuring and scientific appliances.
27 Horological instruments. PART 7—RULES OF PRACTICE IN
28 Jewelry and precious-metal ware. FILINGS PURSUANT TO THE PRO-
29 Brooms, brushes, and dusters.
30 Crockery, earthenware, and porcelain.
TOCOL RELATING TO THE MA-
31 Filters and refrigerators. DRID AGREEMENT CONCERNING
32 Furniture and upholstery. THE INTERNATIONAL REGISTRA-
33 Glassware.
34 Heating, lighting, and ventilating apparatus. TION OF MARKS
35 Belting, hose, machinery packing, and nonmetallic
tires. Subpart A—General Information
36 Musical instruments and supplies.
37 Paper and stationery. Sec.
38 Prints and publications.
7.1 Definitions of terms as used in this part.
39 Clothing.
40 Fancy goods, furnishings, and notions. 7.2 [Reserved]
41 Canes, parasols, and umbrellas. 7.3 Correspondence must be in English.
42 Knitted, netted, and textile fabrics, and substitutes 7.4 Receipt of correspondence.
therefor. 7.5 [Reserved]
43 Thread and yarn. 7.6 Schedule of U.S. process fees.
44 Dental, medical, and surgical appliances. 7.7 Payments of fees to International Bu-
45 Soft drinks and carbonated waters.
46 Foods and ingredients of foods.
reau.
47 Wines.
48 Malt beverages and liquors. Subpart B—International Application
49 Distilled alcoholic liquors. Originating From the United States
50 Merchandise not otherwise classified.
51 Cosmetics and toilet preparations. 7.11 Requirements for international appli-
52 Detergents and soaps. cation originating from the United
SERVICES States.
100 Miscellaneous. 7.12 Claim of color.
101 Advertising and business. 7.13 Certification of international applica-
102 Insurance and financial. tion.
103 Construction and repair. 7.14 Correcting irregularities in inter-
104 Communication.
national application.
105 Transportation and storage.
106 Material treatment.
107 Education and entertainment. Subpart C—Subsequent Designation
Submitted Through the Office
[24 FR 10383, Dec. 22, 1959. Redesignated at 38 7.21 Subsequent designation.
FR 14681, June 4, 1973]
Subpart D—Recording Changes to
§ 6.3 Schedule for certification marks. International Registration
In applications for registration of
7.22 Recording changes to international reg-
certification marks based on sections 1 istration.
and 44 of the Trademark Act and reg- 7.23 Requests for recording assignments at
istrations resulting from such applica- the International Bureau.
tions, goods and services are classified 7.24 Requests to record security interest or
in two classes as follows: other restriction of holder’s rights of dis-
A. Goods. posal or release of such restriction sub-
B. Services. mitted through the Office.
[73 FR 67775, Nov. 15, 2008] Subpart E—Extension of Protection to the

United States
§ 6.4 Schedule for collective member-
ship marks. 7.25 Sections of part 2 applicable to exten-
sion of protection.
All collective membership marks in 7.26 Filing date of extension of protection
applications based on sections 1 and 44 for purposes of examination in the Office.
of the Trademark Act and registrations
7.27 Priority claim of extension of protec-

resulting from such applications are tion for purposes of examination in the
classified as follows: Office.
351
§ 7.1 37 CFR Ch. I (7–1–16 Edition)
7.28 Replacement of U.S. registration by (f) The definitions specified in § 2.2(k)
registered extension of protection. and (n) of this chapter apply to this
7.29 Effect of replacement on U.S. registra- part.
tion.
7.30 Effect of cancellation or expiration of [68 FR 55769, Sept. 26, 2003, as amended at 80
international registration. FR 33190, June 11, 2015]
7.31 Requirements for transformation of an
extension of protection to the United § 7.2 [Reserved]
States into a U.S. application.
§ 7.3 Correspondence must be in
Subpart F—Affidavit Under Section 71 of English.
the Act for Extension of Protection to International applications and reg-
the United States istrations, requests for extension of
protection and all other related cor-
7.36 Affidavit or declaration of use in com-
merce or excusable nonuse required to
respondence with the Office must be in
avoid cancellation of an extension of pro- English. The Office will not process
tection to the United States. correspondence that is in a language
7.37 Requirements for a complete affidavit other than English.
or declaration of use in commerce or ex-
cusable nonuse. § 7.4 Receipt of correspondence.
7.38 Notice to holder of extension of protec- (a) Correspondence Filed Through
tion. TEAS. Correspondence relating to
7.39 Acknowledgment of receipt of and cor- international applications and reg-
recting deficiencies in affidavit or dec- istrations and requests for extension of
laration of use in commerce or excusable
protection submitted through TEAS
nonuse.
will be accorded the date and time on
7.40 Petition to Director to review refusal.
which the complete transmission is re-
Subpart G—Renewal of International ceived in the Office based on Eastern
Registration and Extension of Protection Time. Eastern Time means eastern
standard time or eastern daylight
7.41 Renewal of international registration time, as appropriate.
and extension of protection. (b) Correspondence Filed By Mail.
AUTHORITY: 15 U.S.C. 1123, 35 U.S.C. 2, un- International applications under § 7.11,
less othe rwise noted. subsequent designations under § 7.21,
responses to notices of irregularity
SOURCE: 68 FR 55769, Sept. 26, 2003, unless under § 7.14, requests to record changes
otherwise noted.
in the International Register under
§ 7.23 and § 7.24, requests to note re-
Subpart A—General Information placement under § 7.28, requests for
transformation under § 7.31, and peti-
§ 7.1 Definitions of terms as used in tions to the Director to review an ac-
this part. tion of the Office’s Madrid Processing
(a) the Act means the Trademark Act Unit, when filed by mail, must be ad-
of 1946, 60 Stat. 427, as amended, codi- dressed to: Madrid Processing Unit, 600
fied in 15 U.S.C. 1051 et seq. Dulany Street, MDE–7B87, Alexandria,
(b) Subsequent designation means a re- VA 22314–5793.
quest for extension of protection of an (1) International applications under
international registration to a Con- § 7.11, subsequent designations under
tracting Party made after the Inter- § 7.21, requests to record changes in the
national Bureau registers the mark. International Register under § 7.23 and
§ 7.24, and petitions to the Director to
(c) The acronym TEAS means the
review an action of the Office’s Madrid
Trademark Electronic Application Sys-
Processing Unit, when filed by mail,
tem, available at http://www.uspto.gov.
will be accorded the date of receipt in
(d) The term Office means the United the Office, unless they are sent by Pri-
States Patent and Trademark Office. ority Mail Express® pursuant to § 2.198,
(e) All references to sections in this in which case they will be accorded the
part refer to 37 Code of Federal Regula- date of deposit with the United States
tions, except as otherwise stated. Postal Service.
352
(2) Responses to notices of irregu- § 7.5 [Reserved]

larity under § 7.14, requests to note re-
placement under § 7.28, and requests for § 7.6 Schedule of U.S. process fees.
transformation under § 7.31, when filed (a) The Office requires the following
by mail, will be accorded the date of process fees:
receipt in the Office. (1) For certifying an international
(c) Hand-Delivered Correspondence. application based on a single basic ap-
International applications under § 7.11, plication or registration, per class—
subsequent designations under § 7.21, $100.00
responses to notices of irregularity (2) For certifying an international
under § 7.14, requests to record changes application based on more than one
basic application or registration, per
in the International Register under
class—$150.00
§§ 7.23 and 7.24, requests to note re-
(3) For transmitting a subsequent
placement under § 7.28, requests for designation under § 7.21—$100.00
transformation under § 7.31, and peti- (4) For transmitting a request to
tions to the Director to review an ac- record an assignment or restriction, or
tion of the Office’s Madrid Processing release of a restriction, under § 7.23 or
Unit, may be delivered by hand during § 7.24—$100.00
the hours the Office is open to receive (5) For filing a notice of replacement
correspondence. Madrid-related hand- under § 7.28, per class—$100.00
delivered correspondence must be de- (6) For filing an affidavit under § 71 of
livered to the Trademark Assistance the Act, per class—$100.00
Center, James Madison Building—East (7) Surcharge for filing an affidavit
Wing, Concourse Level, 600 Dulany under § 71 of the Act during the grace
Street, Alexandria, VA 22314, Atten- period, per class—$100.00
tion: MPU. (8) For correcting a deficiency in a
(d) Facsimile Transmission Not Per- section 71 affidavit—$100.00
(b) The fees required in paragraph (a)
mitted. The following documents may
of this section must be paid in U.S. dol-
not be sent by facsimile transmission,
lars at the time of submission of the
and will not be accorded a date of re-
requested action. See § 2.207 of this
ceipt if sent by facsimile transmission: chapter for acceptable forms of pay-
(1) International applications under ment and § 2.208 of this chapter for pay-
§ 7.11; ments using a deposit account estab-
(2) Subsequent designations under lished in the Office.
§ 7.21;
(3) Responses to notices of irregu- FR 35977, June 24, 2010]
larity under § 7.14;
(4) Requests to record changes of § 7.7 Payments of fees to International
ownership under § 7.23; Bureau.
(5) Requests to record restrictions of (a) For documents filed through
the holder’s right of disposal, or the re- TEAS, the following fees may be paid
lease of such restrictions, under § 7.24; either directly to the International Bu-
and reau or through the Office:
(6) Requests for transformation under (1) International application fees;
§ 7.31. (2) Subsequent designation fees; and
(e) Certificate of Mailing or Trans- (3) Recording fee for an assignment of
mission Procedure Does Not Apply. The an international registration under
certificate of mailing or transmission § 7.23.
(b) The fees in paragraph (a) of this
procedure provided in § 2.197 does not
section may be paid as follows:
apply to the documents specified in (1)(i) Directly to the International
paragraph (d) of this section. Bureau by debit to a current account
[69 FR 57185, Sept. 24, 2004, as amended at 69 with the International Bureau. In this
FR 63321, Nov. 1, 2004; 72 FR 18908, Apr. 16, case, an applicant or holder’s submis-
sion to the Office must include the
2007; 79 FR 63041, Oct. 22, 2014]

International Bureau account number;
or
353
§ 7.11 37 CFR Ch. I (7–1–16 Edition)
(ii) Directly to the International Bu- mark in the international application

reau using any other acceptable meth- must be black and white.
od of payment. In this case, an appli- (ii) If the mark in the basic applica-
cant or holder’s submission to the Of- tion or registration is depicted in black
fice must include the International Bu- and white and includes a color claim,
reau receipt number for payment of the the international application must in-
fees; or clude both a black and white reproduc-
(2) Through the Office. Fees paid tion of the mark and a color reproduc-
through the Office must be paid in U.S. tion of the mark.
dollars at the time of submission. See (iii) If the mark in the basic applica-
§ 2.207 of this chapter for acceptable tion and/or registration is depicted in
forms of payment and § 2.208 of this color, the reproduction of the mark in
chapter for payments using a deposit the international application must be
account established in the Office. in color.
(c) All fees for paper filings must be
paid directly to the International Bu- (iv) If the international application
reau. is filed on paper, the mark must be no
(d) The International Bureau fee cal- more than 3.15 inches (8 cm) high by
culator may be viewed on the Web site 3.15 inches (8 cm) wide, and must ap-
of the World Intellectual Property Or- pear in the box designated by the Inter-
ganization, currently available at: national Bureau on the International
http://www.wipo.int/madrid/en/. Bureau’s official form;
(4) A color claim as set out in § 7.12,
[68 FR 55769, Sept. 26, 2003, as amended at 69 if appropriate;
FR 57185, Sept. 24, 2004]
(5) A description of the mark that is
the same as the description of the
Subpart B—International Applica- mark in the basic application or reg-
tion Originating From the istration, as appropriate;
United States (6) An indication of the type of mark
if the mark in the basic application
§ 7.11 Requirements for international
application originating from the and/or registration is a three-dimen-
United States. sional mark, a sound mark, a collective
mark or a certification mark;
(a) The Office will grant a date of re-
(7) A list of the goods and/or services
ceipt to an international application
that is identical to or narrower than
That is either filed through TEAS, or
the list of goods and/or services in each
typed on the official paper form issued
claimed basic application or registra-
by the International Bureau. The inter-
tion and classified according to the
national application must include all
Nice Agreement Concerning the Inter-
of the following:
(1) The filing date and serial number national Classification of Goods and Serv-
of the basic application and/or the reg- ices for the Purposes of the Registration of
istration date and registration number Marks;
of the basic registration; (8) A list of the designated Con-
(2) The name and entity of the inter- tracting Parties. If the goods and/or
national applicant that is identical to services in the international applica-
the name and entity of the applicant or tion are not the same for each des-
registrant in the basic application or ignated Contracting Party, the applica-
basic registration, and the applicant’s tion must list the goods and/or services
current address; in the international application that
(3) A reproduction of the mark that pertain to each designated Contracting
is the same as the mark in the basic Party;
application and/or registration and (9) The certification fee required by
that meets the requirements of § 2.52 of § 7.6;
this title. (10) If the application is filed through
(i) If the mark in the basic applica- TEAS, the international application
tion and/or registration is depicted in fees for all classes, and the fees for all
black and white and the basic applica- designated Contracting Parties identi-
tion or registration does not include a fied in the international application

color claim, the reproduction of the (see § 7.7);
354
(11) A statement that the applicant is § 7.14 Correcting irregularities in

entitled to file an international appli- international application.
cation in the Office, specifying that ap- (a) Response period. Upon receipt of a
plicant: is a national of the United notice of irregularities in an inter-
States; has a domicile in the United national application from the Inter-
States; or has a real and effective in- national Bureau, the applicant must
dustrial or commercial establishment respond to the International Bureau
in the United States. Where an appli- within the period set forth in the no-
cant’s address is not in the United tice.
States, the applicant must provide the (b) Classification and Identification of
address of its U.S. domicile or estab- Goods and Services. Responses to Inter-
lishment; and national Bureau notices of irregular-
(12) If the international application is ities in the classification or identifica-
filed through TEAS, an e-mail address tion of goods or services in an inter-
for receipt of correspondence from the national application must be submitted
Office. through the Office for forwarding to
(b) For requirements for certifi- the International Bureau. The Office
cation, see § 7.13. will review an applicant’s response to a
[68 FR 55769, Sept. 26, 2003, as amended at 69 notice of irregularities in the identi-
FR 57185, Sept. 24, 2004; 73 FR 67775, Nov. 17, fication of goods or services to ensure
2008] that the response does not identify
goods or services that are broader than
§ 7.12 Claim of color. the scope of the goods or services in
(a) If color is claimed as a feature of the basic application or registration.
the mark in the basic application and/ (c) Fees. If the International Bureau
or registration, the international appli- notice of irregularities requires the
cation must include a statement that payment of fees, the fees for correcting
color is claimed as a feature of the irregularities in the international ap-
mark and set forth the same name(s) of plication must be paid directly to the
the color(s) claimed in the basic appli- International Bureau.
cation and/or registration. (d) Other Irregularities Requiring Re-
(b) If color is not claimed as a feature sponse from Applicant. Except for re-
of the mark in the basic application sponses to irregularities mentioned in
and/or registration, color may not be paragraph (b) of this section and pay-
claimed as a feature of the mark in the ment of fees for correcting irregular-
international application. ities mentioned in paragraph (c) of this
section, all other responses may be
§ 7.13 Certification of international ap- submitted through the Office in accord-
plication. ance with § 7.14(e), or filed directly at
(a) When an international application the International Bureau. The Office
contains all the elements set forth in will forward timely responses to the
§ 7.11(a), the Office will certify to the International Bureau, but will not re-
International Bureau that the informa- view the responses or respond to any
tion contained in the international ap- irregularities on behalf of the inter-
plication corresponds to the informa- national applicant.
tion contained in the basic applica- (e) Procedure for response. To be con-
tion(s) and/or basic registration(s) at sidered timely, a response must be re-
the time of certification, and will then ceived by the International Bureau be-
forward the international application fore the end of the response period set
to the International Bureau. forth in the International Bureau’s no-
(b) When an international application tice. Receipt in the Office does not ful-
does not meet the requirements of fill this requirement. Any response
§ 7.11(a), the Office will not certify or submitted through the Office for for-
forward the international application. warding to the International Bureau
If the international applicant paid the should be submitted as soon as pos-
international application fees (see § 7.7) sible, but at least one month before the
through the Office, the Office will re- end of the response period in the Inter-
fund the international fees. The Office national Bureau’s notice. The Office
will not refund the certification fee. will not process any response received
355
§ 7.21 37 CFR Ch. I (7–1–16 Edition)
in the Office after the International (8) If the subsequent designation is

Bureau’s response deadline. filed through TEAS, the subsequent
designation fees (see § 7.7); and
(9) If the subsequent designation is
FR 57186, Sept. 24, 2004; 73 FR 67776, Nov. 17,
2008]
filed through TEAS, an e-mail address
for receipt of correspondence from the
Office.
Subpart C—Subsequent Designa- (c) If the subsequent designation is
tion Submitted Through the accorded a date of receipt, the Office
Office will then forward the subsequent des-
ignation to the International Bureau.
§ 7.21 Subsequent designation. (d) If the subsequent designation fails
(a) A subsequent designation may be to contain all the elements set forth in
filed directly with the International paragraph (b) of this section, the Office
Bureau, or, if it meets the require- will not forward the subsequent des-
ments of paragraph (b) of this section, ignation to the International Bureau.
submitted through the Office. The Office will notify the holder of the
reason(s). If the holder paid the subse-
(b) The Office will grant a date of re- quent designation fees (see § 7.7)
ceipt to a subsequent designation that through the Office, the Office will re-
is either filed through TEAS, or typed fund the subsequent designation fees.
on the official paper form issued by the The Office will not refund the trans-
International Bureau. The subsequent mittal fee.
designation must contain all of the fol- (e) Correspondence to correct any
lowing: irregularities in a subsequent designa-
(1) The international registration tion must be made directly with the
number; International Bureau.
(2) The serial number of the U.S. ap-
plication or registration number of the FR 57186, Sept. 24, 2004]
U.S. registration that formed the basis
of the international registration;
(3) The name and address of the hold-
Subpart D—Recording Changes to
er of the international registration; International Registration
(4) A statement that the holder is en- § 7.22 Recording changes to inter-
titled to file a subsequent designation national registration.
in the Office, specifying that holder: Is
Except as provided in §§ 7.23 and 7.24,
a national of the United States; has a
requests to record changes to an inter-
domicile in the United States; or has a
national registration must be filed
real and effective industrial or com- with the International Bureau. If a re-
mercial establishment in the United quest to record an assignment or re-
States. Where a holder’s address is not striction of a holder’s right of disposal
in the United States, the holder must of an international registration or the
provide the address of its U.S. domicile release of such a restriction meets the
or establishment; requirements of § 7.23 or 7.24, the Office
(5) A list of goods and/or services that will forward the request to the Inter-
is identical to or narrower than the list national Bureau. Section 10 of the Act
of goods and/or services in the inter- and part 3 of this chapter are not appli-
national registration; cable to assignments or restrictions of
(6) A list of the designated Con- international registrations.
tracting Parties. If the goods and/or
services in the subsequent designation § 7.23 Requests for recording assign-
are not the same for each designated ments at the International Bureau.
Contracting Party, the holder must list A request to record an assignment of
the goods and/or services covered by an international registration may be
the subsequent designation that per- submitted through the Office for for-
tain to each designated Contracting warding to the International Bureau
Party; only if the assignee cannot obtain the
(7) The U.S. transmittal fee required assignor’s signature for the request to
by § 7.6; record the assignment.
356
(a) A request to record an assignment signee paid the fees to record the as-
submitted through the Office must in- signment (see § 7.7) through the Office,
clude all of the following: the Office will refund the recording fee.
(1) The international registration The Office will not refund the trans-
number; mittal fee.
(2) The name and address of the hold- (d) Correspondence to correct any
er of the international registration; irregularities in a request to record an
(3) The name and address of the as- assignment must be made directly with
signee of the international registra- the International Bureau.
tion;
(4) A statement that the assignee: Is [68 FR 55769, Sept. 26, 2003, as amended at 69
FR 57186, Sept. 24, 2004; 80 FR 2313, Jan. 16,
a national of the United States; has a 2015]
domicile in the United States; or has a
real and effective industrial or com- § 7.24 Requests to record security in-
mercial establishment in the United terest or other restriction of hold-
States. Where an assignee’s address is er’s rights of disposal or release of
not in the United States, the assignee such restriction submitted through
must provide the address of its U.S. the Office.
domicile or establishment; (a) A party who obtained a security
(5) A statement, signed and verified interest or other restriction of a hold-
(sworn to) or supported by a declara- er’s right to dispose of an international
tion under § 2.20 of this chapter, that, registration, or the release of such a
for the request to record the assign- restriction, may submit a request to
ment, either the assignee could not ob- record the restriction or release
tain the assignor’s signature because through the Office for forwarding to
the holder no longer exists, or, after a the International Bureau only if:
good-faith effort, the assignee could (1) The restriction or release:
not obtain the assignor’s signature; (i) Is the result of a court order; or
(6) An indication that the assignment
(ii) Is the result of an agreement be-
applies to the designation to the
tween the holder of the international
United States or an international reg-
registration and the party restricting
istration that is based on a U.S. appli-
the holder’s right of disposal, and the
cation or registration;
signature of the holder cannot be ob-
(7) A statement that the assignment
tained for the request to record the re-
applies to all the goods and/or services
striction or release;
in the international registration, or if
(2) The party who obtained the re-
less, a list of the goods and/or services
striction is a national of, is domiciled
in the international registration that
in, or has a real and effective industrial
have been assigned that pertain to the
or commercial establishment in the
designation to the United States; and
United States; and
(8) The U.S. transmittal fee required
by § 7.6. (3) The restriction or release applies
(b) If a request to record an assign- to the holder’s right to dispose of the
ment contains all the elements set international registration in the
forth in paragraph (a) of this section, United States.
the Office will forward the request to (b) A request to record a restriction
the International Bureau. Forwarding or the release of a restriction must be
the request to the International Bu- submitted by the party who obtained
reau is not a determination by the Of- the restriction of the holder’s right of
fice of the validity of the assignment disposal and include all the following:
or the effect that the assignment has (1) The international registration
on the title of the international reg- number;
istration. (2) The name and address of the hold-
(c) If the request fails to contain all er of the international registration;
the elements set forth in paragraph (a) (3) The name and address of the party
of this section, the Office will not for- who obtained the restriction;
ward the request to the International (4) A statement that the party who
Bureau. The Office will notify the as- submitted the request: Is a national of
signee(s) of the reason(s). If the as- the United States; has a domicile in
357
§ 7.25 37 CFR Ch. I (7–1–16 Edition)
the United States; or has a real and ef- (e) Correspondence to correct any
fective industrial or commercial estab- irregularities in a request to record a
lishment in the United States. Where a restriction of a holder’s right to dis-
party’s address is not in the United pose of an international registration or
States, the party must provide the ad- the release of such a restriction must
dress of its U.S. domicile or establish- be made directly with the Inter-
ment; national Bureau.
(5)(i) A statement that the restric-
tion is the result of a court order, or FR 2313, Jan. 16, 2015]
(ii) Where the restriction is the re-
sult of an agreement between the hold-
er of the international registration and Subpart E—Extension of Protection
the party restricting the holder’s right to the United States
of disposal, a statement, signed and
verified (sworn to) or supported by a § 7.25 Sections of part 2 applicable to
extension of protection.
declaration under § 2.20 of this chapter,
that, for the request to record the re- (a) Except for §§ 2.21 through 2.23, 2.76,
striction, or release of the restriction, 2.88, 2.89, 2.130, 2.131, 2.160 through 2.166,
either the holder of the international 2.168, 2.173, 2.175, 2.181 through 2.186,
registration could not obtain the signa- and 2.197, all sections in parts 2 and 11
ture of the party restricting the hold- of this chapter shall apply to an exten-
er’s right of disposal because the party sion of protection of an international
restricting the holder’s right of dis- registration to the United States, in-
posal no longer exists, or, after a good- cluding sections related to proceedings
faith effort, the holder of the inter- before the Trademark Trial and Appeal
national registration could not obtain Board, unless otherwise stated.
the signature of the party restricting (b) The Office will refer to a request
the holder’s right of disposal; for an extension of protection to the
(6) A summary of the main facts con- United States as an application under
cerning the restriction; section 66(a) of the Act, and references
(7) An indication that the restriction, to applications and registrations in
or the release of the restriction, of the part 2 of this chapter include exten-
holder’s right of disposal of the inter- sions of protection to the United
national registration applies to the States.
designation to the United States or an (c) Upon registration in the United
international registration that is based States under section 69 of the Act, an
on a U.S. application or registration; extension of protection to the United
and States is referred to as a registration,
(8) The U.S. transmittal fee required a registered extension of protection, or
by § 7.6. a section 66(a) registration.
(c) If a request to record a restric-
tion, or the release of a restriction, FR 57186, Sept. 24, 2004; 70 FR 38774, July 6,
contains all the elements set forth in 2005; 73 FR 47686, Aug. 14, 2008; 73 FR 67776,
paragraph (b) of this section, the Office Nov. 17, 2008; 75 FR 35977, June 24, 2010; 78 FR
will forward the request to the Inter- 20197, Apr. 3, 2013; 80 FR 2313, Jan. 16, 2015]
national Bureau. Forwarding the re-
quest to the International Bureau is § 7.26 Filing date of extension of pro-
not a determination by the Office of tection for purposes of examination
the validity of the restriction, or its rein the Office.
lease, or the effect that the restriction (a) If a request for extension of pro-
has on the holder’s right to dispose of tection of an international registration
the international registration. to the United States is made in an
(d) If the request fails to contain all international application and the re-
the elements set forth in paragraph (b) quest includes a declaration of a bona
of this section, the Office will not for- fide intention to use the mark in com-
ward the request. The Office will notify merce as set out in § 2.33(e) of this
the party who submitted the request of chapter, the filing date of the exten-
the reason(s). The Office will not re- sion of protection to the United States
fund the transmittal fee. is the international registration date.
358
(b) If a request for extension of proof the replacement in its automated

tection of an international registration records:
to the United States is made in a sub- (1) The serial number or registration
sequent designation and the request in- number of the extension of protection;
cludes a declaration of a bona fide in- (2) The registration number of the re-
tention to use the mark in commerce placed U.S. registration; and
as set out in § 2.33(e), the filing date of (3) The fee required by § 7.6.
the extension of protection to the (c) If the request to note replacement
United States is the date that the is denied, the Office will notify the
International Bureau records the sub- holder of the reason(s) for refusal.
sequent designation.
§ 7.29 Effect of replacement on U.S.
§ 7.27 Priority claim of extension of registration.
protection for purposes of examina-
tion in the Office. A U.S. registration that has been re-
placed by a registered extension of pro-
An extension of protection of an tection under section 74 of the Act and
international registration to the § 7.28 will remain in force, unless can-
United States is entitled to a claim of celled, expired or surrendered, as long
priority under section 67 of the Act if: as:
(a) The request for extension of pro- (a) The owner of the replaced U.S.
tection contains a claim of priority; registration continues to file affidavits
(b) The request for extension of pro- or declarations of use in commerce or
tection specifies the filing date, serial excusable nonuse under section 8 of the
number and the country of the applica- Act; and
tion that forms the basis for the claim (b) The replaced U.S. registration is
of priority; and renewed under section 9 of the Act.
(c) The date of the international reg-
istration or the date of recording of the § 7.30 Effect of cancellation or expira-
subsequent designation at the Inter- tion of international registration.
national Bureau of the request for ex- When the International Bureau noti-
tension of protection to the United fies the Office of the cancellation or ex-
States is not later than six months piration of an international registra-
after the filing date of the application tion, in whole or in part, the Office
that forms the basis for the claim of shall cancel, in whole or in part, the
priority. corresponding pending or registered ex-
tension of protection to the United
§ 7.28 Replacement of U.S. registration States. The date of cancellation of an
by registered extension of protec-
tion. extension of protection or relevant
part shall be the date of cancellation or
(a) A registered extension of protec- expiration of the corresponding inter-
tion affords the same rights as those national registration or relevant part.
afforded to a previously issued U.S.
registration if: § 7.31 Requirements for trans-
(1) Both registrations are owned by formation of an extension of protec-
the same person and identify the same tion to the United States into a U.S.
mark; and application.
(2) All the goods and/or services list- If the International Bureau cancels
ed in the U.S. registration are also list- an international registration in whole
ed in the registered extension of pro- or in part, under Article 6(4) of the Ma-
tection. drid Protocol, the holder of that inter-
(b) The holder of an international national registration may file a re-
registration with a registered exten- quest to transform the goods and/or
sion of protection to the United States services to which the cancellation ap-
that meets the requirements of para- plies in the corresponding pending or
graph (a) of this section may file a reregistered extension of protection to
quest to note replacement of the U.S. the United States into an application
registration with the extension of pro- under section 1 or 44 of the Act.
tection. If the request contains all of (a) The holder of the international
the following, the Office will take note registration must file a request for
359
§ 7.36 37 CFR Ch. I (7–1–16 Edition)
transformation within three months of (b) During the following time periods,
the date of cancellation of the inter- the holder of an international registra-
national registration and include: tion must file an affidavit or declara-
(1) The serial number or registration tion of use or excusable nonuse, or the
number of the extension of protection registered extension of protection will
to the United States; be cancelled under section 71 of the
(2) The name and address of the hold- Act:
er of the international registration; (1) On or after the fifth anniversary
(3) Identify the goods and/or services and no later than the sixth anniversary
to be transformed, if other than all the after the date of registration in the
goods and/or services that have been United States; and
cancelled;
(2) Within the year before the end of
(4) The application filing fee for at
least one class of goods or services re- every ten-year period after the date of
quired by § 2.6(a)(1) of this chapter; and registration in the United States.
(5) An email address for receipt of (3) The affidavit or declaration may
correspondence from the Office. be filed within a grace period of six
(b) If the request for transformation months after the end of the deadline
contains all the elements set forth in set forth in paragraphs (b)(1) and (b)(2)
paragraph (a) of this section, the exten- of this section, with payment of the
sion of protection shall be transformed grace period surcharge per class re-
into an application under section 1 and/ quired by section 71(a)(3) of the Act and
or 44 of the Act and accorded the same § 7.6.
filing date and the same priority that (c) For the requirements for the affi-
was accorded to the extension of pro- davit or declaration, see § 7.37.
tection.
(c) The application under section 1
FR 35977, June 24, 2010]
and/or 44 of the Act that results from a
transformed extension of protection § 7.37 Requirements for a complete af-
will be examined under part 2 of this fidavit or declaration of use in com-
chapter. merce or excusable nonuse.
(d) A request for transformation that
fails to contain all the elements set A complete affidavit or declaration
forth in paragraph (a) of this section under section 71 of the Act must:
will not be accepted. (a) Be filed by the holder of the inter-
national registration within the period
[68 FR 55769, Sept. 26, 2003, as amended at 69 set forth in § 7.36(b);
FR 57186, Sept. 24, 2004; 80 FR 2313, Jan. 16,
2015]
(b) Include a verified statement at-
testing to the use in commerce or ex-
cusable nonuse of the mark within the
Subpart F—Affidavit Under Section period set forth in section 71 of the
71 of the Act for Extension of Act. The verified statement must be
Protection to the United executed on or after the beginning of
States the filing period specified in § 7.36(b). A
person who is properly authorized to
§ 7.36 Affidavit or declaration of use in sign on behalf of the holder is:
commerce or excusable nonuse re-
quired to avoid cancellation of an (1) A person with legal authority to
extension of protection to the bind the holder;
United States. (2) A person with firsthand knowl-
(a) Subject to the provisions of sec- edge of the facts and actual or implied
tion 71 of the Act, a registered exten- authority to act on behalf of the hold-
sion of protection shall remain in force er; or
for the term of the international reg- (3) An attorney as defined in § 11.1 of
istration upon which it is based unless this chapter who has an actual written
the international registration expires or verbal power of attorney or an im-
or is cancelled under section 70 of the plied power of attorney from the hold-
Act due to cancellation of the inter- er.
national registration by the Inter- (c) Include the U.S. registration num-
national Bureau. ber;
360
(d)(1) Include the fee required by § 7.6 excusable nonuse is claimed under
for each class that the affidavit or dec- paragraph (f)(2) of this section. When
laration covers; requested by the Office, additional
(2) If the affidavit or declaration is specimens must be provided. The speci-
filed during the grace period under sec- men must meet the requirements of
tion 71(a)(3) of the Act, include the § 2.56 of this chapter.
grace period surcharge per class re- (h) The Office may require the holder
quired by § 7.6; to furnish such information, exhibits,
(3) If at least one fee is submitted for affidavits or declarations, and such ad-
a multiple-class registration, but the ditional specimens as may be reason-
fee is insufficient to cover all the class-
ably necessary to the proper examina-
es and the class(es) to which the fee(s)
tion of the affidavit or declaration
should be applied are not specified, the
Office will issue a notice requiring ei- under section 71 of the Act.
ther submission of the additional fee(s) (i) Additional requirements for a col-
or specification of the class(es) to lective mark: In addition to the above
which the initial fee(s) should be ap- requirements, a complete affidavit or
plied. Additional fees may be sub- declaration pertaining to a collective
mitted if the requirements of § 7.39 are mark must:
met. If the additional fee(s) are not (1) State that the holder is exercising
submitted within the time period set legitimate control over the use of the
out in the Office action and the mark in commerce; and
class(es) to which the original fee(s) (2) State the nature of the holder’s
should be applied are not specified, the control over the use of the mark by the
Office will presume that the fee(s) members in the first affidavit or dec-
cover the classes in ascending order, laration filed under paragraph (a) of
beginning with the lowest numbered this section.
class; (j) Additional requirements for a cer-
(e)(1) Specify the goods, services, or tification mark: In addition to the
nature of the collective membership
above requirements, a complete affi-
organization for which the mark is in
davit or declaration pertaining to a
use in commerce, and/or the goods,
services, or nature of the collective certification mark must:
membership organization for which ex- (1) Include a copy of the certification
cusable nonuse is claimed under para- standards specified in § 2.45(a)(4)(i)(B)
graph (f)(2) of this section; and of this chapter;
(2) Specify the goods, services, or (i) Submitting certification standards
classes being deleted from the registra- for the first time. In the first affidavit or
tion, if the affidavit or declaration cov- declaration filed under paragraph (a) of
ers fewer than all the goods, services, this section, include a copy of the cer-
or classes in the registration; tification standards; or
(f)(1) State that the registered mark (ii) Certification standards submitted in
is in use in commerce; or prior filing. If the certification stand-
(2) If the registered mark is not in ards in use at the time of filing the af-
use in commerce on or in connection fidavit or declaration have not changed
with all the goods, services, or classes since the date they were previously
specified in the registration, set forth submitted to the Office, include a
the date when such use of the mark in statement to that effect; if the certifi-
commerce stopped and the approxi- cation standards in use at the time of
mate date when such use is expected to filing the affidavit or declaration have
resume; and recite facts to show that
changed since the date they were pre-
nonuse as to those goods, services, or
viously submitted to the Office, in-
classes is due to special circumstances
that excuse the nonuse and is not due clude a copy of the revised certifi-
to an intention to abandon the mark; cation standards;
and (2) State that the holder is exercising
(g) Include one specimen showing legitimate control over the use of the
how the mark is in use in commerce for mark in commerce; and

each class in the registration, unless
361
§ 7.38 37 CFR Ch. I (7–1–16 Edition)
(3) Satisfy the requirements of Act, deficiencies may be corrected be-

§ 2.45(a)(4)(i)(A) and (C) of this chapter. fore the end of this filing period with-
[68 FR 55769, Sept. 26, 2003, as amended at 73 out paying a deficiency surcharge. De-
FR 47686, Aug. 14, 2008; 75 FR 35977, June 24, ficiencies may be corrected after the
2010; 77 FR 30208, May 22, 2012; 80 FR 33190, end of this filing period with payment
June 11, 2015] of the deficiency surcharge required by
section 71(c) of the Act and § 7.6.
§ 7.38 Notice to holder of extension of (2) Correcting deficiencies in affidavits
protection.
or declarations filed during the grace pe-
The registration certificate for an ex- riod. If the affidavit or declaration is
tension of protection to the United filed during the six-month grace period
States includes a notice of the require- provided by section 71(a)(3) of the Act,
ment for filing the affidavit or declara- deficiencies may be corrected before
tion of use or excusable nonuse under
the expiration of the grace period with-
section 71 of the Act. However, the affi-
out paying a deficiency surcharge. De-
davit or declaration must be filed with-
ficiencies may be corrected after the
in the time period required by section
71 of the Act regardless of whether this expiration of the grace period with
notice is received. payment of the deficiency surcharge
required by section 71(c) of the Act and
§ 7.39 Acknowledgment of receipt of § 7.6.
and correcting deficiencies in affi- (d) If the affidavit or declaration is
davit or declaration of use in com- not filed within the time periods set
merce or excusable nonuse.
forth in section 71 of the Act, the reg-
The Office will issue a notice as to istration will be cancelled.
whether an affidavit or declaration is
acceptable, or the reasons for refusal. [75 FR 35977, June 24, 2010, as amended at 76
(a) A response to the refusal must be FR 69133, Nov. 8, 2011]
filed within six months of the date of
§ 7.40 Petition to Director to review re-
issuance of the Office action, or before fusal.
the end of the filing period set forth in
section 71(a) of the Act, whichever is (a) A response to the examiner’s ini-
later. The response must be signed by tial refusal to accept an affidavit or
the holder, someone with legal author- declaration is required before filing a
ity to bind the holder (e.g., a corporate petition to the Director, unless the ex-
officer or general partner of a partner- aminer directs otherwise. See § 7.39(b)
ship), or a practitioner qualified to for the deadline for responding to an
practice under § 11.14 of this chapter, in examiner’s Office action.
accordance with the requirements of (b) If the examiner maintains the re-
§ 2.193(e)(2). fusal of the affidavit or declaration,
(b) If no response is filed within this the holder may file a petition to the
time period, the extension of protec- Director to review the examiner’s ac-
tion will be cancelled, unless time re- tion. The petition must be filed within
mains in the grace period under section six months of the date of issuance of
71(a)(3) of the Act. If time remains in
the action maintaining the refusal, or
the grace period, the holder may file a
the Office will cancel the registration.
complete, new affidavit.
(c) If the affidavit or declaration is (c) A decision by the Director is nec-
filed within the time periods set forth essary before filing an appeal or com-
in section 71 of the Act, deficiencies mencing a civil action in any court.
may be corrected after notification [68 FR 55769, Sept. 26, 2003, as amended at 73
from the Office, as follows: FR 67776, Nov. 17, 2008]
(1) Correcting deficiencies in affidavits
or declarations timely filed within the pe-
riods set forth in sections 71(a)(1) and
71(a)(2) of the Act. If the affidavit or
declaration is timely filed within the
relevant filing period set forth in sec-

tion 71(a)(1) or section 71(a)(2) of the
362
Subpart G—Renewal of Inter- of protection to the United States

national Registration and Ex- must be made at the International Bu-
reau in accordance with Article 7 of the
tension of Protection Madrid Protocol.
§ 7.41 Renewal of international reg- (b) A request to renew an inter-
istration and extension of protec- national registration or extension of
tion. protection to the United States sub-
(a) Any request to renew an inter- mitted through the Office will not be
national registration and its extension processed.
363
INDEX II—RULES RELATING TO TRADEMARKS
EDITORIAL NOTE: This listing is provided for information purposes only. It is compiled and
kept up-to-date by the Department of Commerce. This index is updated as of July 1, 2016.
Section
A
Abandonment of application or mark:
During inter partes proceeding ........................................................................ 2.135
Express abandonment....................................................................................... 2.68
For failure to respond or to respond completely to official action .............. 2.65(a)
For failure to timely file a statement of use ............................................... 2.65(c)
Revival of abandoned application .................................................................... 2.66
Acceptance of affidavit under sec. 8................................................................... 2.163
Access:
To applications, and all proceedings relating thereto, after publication
or registration........................................................................................ 2.27(d)
To applications prior to publication ............................................................ 2.27(b)
To assignment records .................................................................................... 2.200
To decisions of Director and the Trademark Trial and Appeal
Board...................................................................................................... 2.27(c)
To materials filed under seal pursuant to a protective order ......... 2.27(e); 2.126(c)
To pending trademark application index ..................................................... 2.27(a)
Acknowledgment of receipt of affidavit or declaration:
Filed under sec. 8 ............................................................................................ 2.163
Filed under sec. 71 ............................................................................................ 7.39
Act, The, defined .............................................................................................. 2.2(a)
Action by assignee of record or owner..................................................... 3.71(d), 3.73
Action by Examiner on application .................................................................... 2.61
Adding party to an interference .......................................................................... 2.98
Address for correspondence with U.S. Patent and Trademark Office ................ 2.190
Additional specimens:
Bases for filing.................................................................................... 2.34(a)(1)(iv)
Specimens .................................................................................................... 2.56(a)
Action by examiner...................................................................................... 2.61(b)
Amendment to allege use ......................................................................... 2.76(b)(2)
Application may include multiple clases ........................................... 2.86(a)(3), (b)
Filing statement of use after notice of allowance ................................... 2.88(b)(2)
Requirements for a complete affidavit or declaration of continued use
or excusable nonuse ....................................................................... 2.161(g), (h)
Amendment of registration .............................................................. 2.173(b)(3), (4)
Requirements for a complete affidavit or declaration of use in com-
merce or excusable nonuse .............................................................. 7.37(g), (h)
Admissions, request for (discovery):
Motion to determine sufficiency of response.............................................. 2.120(h)
Timing of .................................................................................................... 2.120(a)
Use of admission.......................................................................................... 2.120(j)
When to file copy of request with Trademark Trial and Appeal
Board ................................................................................................. 2.120(j)(8)
Advertising by attorneys and others, restricted .............................................. 11.702
Affidavit or declaration:
Claiming benefits of Act of 1946 under sec. 12(c) ............................................. 2.153
365
Combined secs. 8 and 15 .............................................................................. 2.168(a)

Combined secs. 9 and 15 .............................................................................. 2.168(b)
For incontestability under sec. 15 .................................................................. 2.167
Of use in commerce or excusable nonuse under sec. 8 ............................... 2.160-166
Of use in commerce or excusable nonuse under sec. 71 .............................. 7.36-7.40
Reconsideration of, under sec. 8 ............................................................. 2.163-2.165
Reconsideration of, under sec. 71 .............................................................. 7.39, 7.40
To avoid cancellation of registration under sec. 8.................................. 2.160-2.166
To avoid cancellation of registration under sec. 71 ................................... 7.36-7.40
Agent. (See Attorneys and other representatives)
Allegations in application or registration not evidence on behalf of ap-
plicant or registrant in inter partes proceeding.................................... 2.122(b)(2)
Allowance, notice of ................................................................................ 2.81(b), 2.88
Amendment of application:
After final action ......................................................................................... 2.64(b)
After publication .......................................................................... 2.35(b)(2), 2.84(b)
Between notice of allowance and statement of use .......................................... 2.77
Description or drawing of mark ....................................................................... 2.72
Form of amendment ......................................................................................... 2.74
Involved in inter partes proceedings ................................................................ 2.133
To allege use .................................................................................................... 2.76
To change to different register ........................................................................ 2.75
To correct informalities................................................................................... 2.71
To seek concurrent use registration ................................................................ 2.73
Amendment of pleadings in inter partes proceedings:
Cancellation.................................................................................................... 2.115
Opposition....................................................................................................... 2.107
Amendment of registration:
During inter partes proceedings ....................................................................... 2.133
Requirements for, in general .......................................................................... 2.173
Amendment to allege use .................................................................................... 2.76
Amendments to description or drawing of mark after filing ....................... 2.72(b)
Correction of deficiency in........................................................................... 2.76(g)
Fee for filing ...................................................................................................... 2.6
Filed during final action response period..................................................... 2.64(c)
Minimum requirements for filing ................................................................ 2.76(e)
Requirements for ......................................................................................... 2.76(b)
Time for filing.............................................................................................. 2.76(a)
Withdrawal of .............................................................................................. 2.76(h)
Answer to pleadings in opposition and cancellation proceedings ............. 2.106, 2.114
Contents of answer. ............................................................... 2.106(b)(1), 2.114(b)(1)
Corresponds to answer in court proceeding ................................................ 2.116(c)
Counterclaim ......................................................................... 2.106(b)(2), 2.114(b)(2)
Failure to timely answer............................................................... 2.106(a), 2.114(a)
Answer to notice instituting concurrent use proceeding ................................ 2.99(d)
Failure to answer ..................................................................................... 2.99(d)(3)
Who needs to answer and when ................................................................ 2.99(d)(2)
Appeal to Court and civil action........................................................................ 2.145
Appeal to Court from decision of Director...................................................... 2.145
Appeal to Court from decision of Trademark Trial and Appeal
Board ........................................................................................................ 2.145
Appeal to U.S. Court of Appeals for the Federal Circuit ............................ 2.145(a)
Civil action ................................................................................................. 2.145(c)
Extensions of time to appeal ...................................................................... 2.145(e)
Notice of appeal to Court........................................................................ 2.145(c)(4)
Notice of appeal to U.S. Court of Appeals for the Federal Circuit ............. 2.145(b)
Notice of election by appellee to proceed by civil action after appeal
to U.S. Court of Appeals for the Federal circuit............................... 2.145(c)(3)
366
Index II
Time for appeal or civil action ................................................................... 2.145(d)

Appeal to Trademark Trial and Appeal Board:
Appropriate response to final refusal or second refusal on the same
grounds ......................................................................................... 2.64(a), 2.141
Briefs on appeal .......................................................................................... 2.142(b)
Compliance with requirements not on appeal ............................................ 2.142(c)
Failure of appellant to file brief ............................................................. 2.142(b)(1)
Introduction of new evidence after filing of appeal .................................... 2.142(d)
Oral hearing on appeal................................................................................ 2.142(e)
Reconsideration of decision on appeal ............................................................ 2.144
Remand to Examiner re new issue prior to decision ................................... 2.142(f)
Reopening of examination of application after decision on appeal ............ 2.142(g)
Time and manner of filing appeal............................................................... 2.142(a)
Applicant:
Foreign ............................................................................................. 2.24, 2.34(a)(3)
May be represented by an attorney .................................................................. 2.11
Name of .................................................................................... 2.21(a)(1), 2.32(a)(2)
Signature and oath or declaration ................................................................... 2.33
Application for registration ......................................................................... 2.21-2.47
Access to pending applications ........................................................................ 2.27
Amendment of. See Amendment of application.
Basis for filing .......................................................................................... 2.34, 2.35
Certification mark ........................................................................................... 2.45
Collective mark................................................................................................ 2.44
Color claim in .......................................................................................... 2.52(b)(1)
Concurrent use .................................................................................. 2.42, 2.73, 2.99
Conflicting marks, co-pending applications for ............................................... 2.83
Description of mark ......................................................................................... 2.37
Different classes may be combined .................................................................. 2.86
Dividing of applications ................................................................................... 2.87
Drawing required.............................................................................................. 2.51
Extension of protection of international registration to United
States .................................................................................................. 7.25-7.41
Filing-date requirements ................................................................................. 2.21
Form of application ................................................................................... 2.32-2.47
For international registration. See International registration, application for
Must be in English ....................................................................................... 2.32(a)
Principal Register ............................................................................................ 2.46
Priority claim based on foreign application ..................................... 2.34(a)(4), 7.27
Prior registrations should be identified ........................................................... 2.36
Requirements for drawings........................................................................ 2.52-2.54
Requirements for written application ....................................................... 2.32-2.34
Service mark .................................................................................................... 2.43
Signature of.......................................................................................... 2.32(b), 2.33
Specimens filed with................................................................................. 2.56, 2.59
Supplemental Register ..................................................................................... 2.47
Verification of ...................................................................................... 2.32(b), 2.33
Assignee:
Certificate of registration may be issued to .................................................... 3.85
New certificate of registration may be issued to ............................................ 2.171
Not domiciled in U.S. ....................................................................................... 3.61
Right to take action when assignment is recorded or proof of assign-
ment has been submitted................................................................ 3.71(d), 3.73
Assignment of registered marks or marks subject to pending applica-
tions.................................................................................................. 3.1-3.85, 7.23
Cover sheet required to record.................................................................. 3.28, 3.31
Effect of recording............................................................................................ 3.54
Electronically filed requests to record ..................................... 3.25(c)(1), 3.31(a)(7)
367
Extension of protection of international registration to U.S., assign-

ment of ............................................................................................... 7.22, 7.23
Original documents should not be submitted for recordation .............. 3.25, 3.34(b)
Recording fees .................................................................................................. 3.41
Recording in U.S. Patent and Trademark Office of assignments or
other instruments relating to such marks ................................................. 3.11
Recording of changes to International registrations or applications not
applicable ................................................................................................... 7.22
Records open to public inspection ......................................................... 2.200, 2.201
Requirements for recording ............................................................... 3.25-3.31, 3.41
Assignment of trial dates in inter partes proceedings ........................... 2.120(a), 2.121
Consolidated proceedings........................................................................ 2.121(b)(2)
Counterclaim .......................................................................................... 2.121(b)(2)
Discovery period ......................................................................................... 2.120(a)
Extending, Rescheduling.................................................... 2.120(a), 2.121(a) (c), (d)
Testimony periods .......................................................................................... 2.121
Trial order mailed with notice of institution............................................. 2.120(a)
Attorney conflict of interest ........................................... 2.61(c), 11.107, 11.108, 11.111
Attorneys and other representatives ........................................ 2.11, 2.17-2.19, 2.119(d
Attorneys fees:
Unavailable .................................................................................................... 2.127(f)
Authentication of copies of assignment records........................................ 2.200(a)(2)
B
Basis for filing an application ..................................................................... 2.34, 2.35
Bona fide intention to use .............. 2.34(a)(2), 2.34(a)(3)(i), 2.34(a)(4)(B)(ii), 2.89(a)(3),
2.89(b)(3)
Briefs:
At final hearing in inter partes case ................................................................ 2.128
Failure of appellant to file brief on appeal ............................................. 2.142(b)(1)
Failure of inter partes plaintiff to file brief at final hearing ................... 2.128(a)(3)
Failure to file brief on inter partes motion ................................................. 2.127(a)
On appeal to Trademark Trial and Appeal Board....................................... 2.142(b)
On motions in inter partes cases ........................................................ 2.127(a), (e)(1)
On petitions to Director ....................................................................... 2.146(c), (e)
Burden of proof in an interference ...................................................................... 2.96
Business with U.S. Patent and Trademark Office to be conducted with
decorum and courtesy.................................................................................. 2.192
Business with U.S. Patent and Trademark Office transacted in writ-
ing................................................................................................................ 2.191
C
Cancellation of registrations (See also International Registration, cancellation
of):
By cancellation proceeding; pleadings and procedure .................................... 2.111
(See also Petition for Cancellation)
By registrant ......................................................................................... 2.134, 2.172
For failure to file affidavit or declaration of use under sec. 8 ................ 2.160-2.166
For failure to file affidavit or declaration of use under sec. 71 ................. 7.36-7.40
During cancellation proceeding.................................................................. 2.134(b)
Cases not specifically defined in rules, petition to the Director ............... 2.146(a)(4)
Certificate of correction of registration ................................................... 2.174, 2.175
Certificate of mailing by first class mail........................................................... 2.197
Certificate of registration:
As evidence in inter partes proceeding ............................................ 2.122(b), (d), (e)
Contents.......................................................................................................... 2.151
368
Index II
In Registered extension of protection of international registration to

United States ............................................................................................. 7.28
Issuance of new certificate to assignee........................................................... 2.171
When and how issued ....................................................................... 2.81, 2.82, 2.151
Certificate of transmission ................................................................................ 2.197
Certification mark............................................................................... 2.45, 2.56(a)(5)
Certification of international application .......................................................... 7.13
Certified copies of registrations and records ..................................................... 2.201
Citizenship of applicant .............................................................................. 2.32(a)(3)
Civil action:
From decision of Director........................................................................... 2.145(c)
From decision of Trademark Trial and Appeal Board ................................ 2.145(c)
Notice of election by appellee to proceed by civil action after appeal
to U.S. Court of Appeals for the Federal Circuit .............................. 2.145(c)(3)
Notice to Trademark Trial and Appeal Board of election to commence
civil action for review of Board decision .......................................... 2.145(c)(4)
Suspension of action in application pending outcome ..................................... 2.67
Suspension of inter partes proceedings pending outcome ................................ 2.117
Time for commencing civil action from decision of Director or Trade-
mark Trial and Appeal Board ............................................................... 2.145(d)
Waiver of right to proceed by civil action in ex parte case ..................... 2.145(c)(2)
Civil Procedure, Federal Rules of, applied to inter partes proceedings ......... 2.116(a),
2.120(a)
Claim of benefits of Act of 1946 for marks registered under prior
Acts ..................................................................................................... 2.153-2.156
Classification of goods and services .................................................................... 2.85
Application limited to single class .............................................................. 2.86(a)
Combined applications ..................................................................................... 2.86
Schedules of classes ...................................................................................... 6.1-6.4
Collective mark ................................................................................... 2.44, 2.56(a)(3)
Color claim:
In application for registration in United States ...................................... 2.52(b)(1)
In application for international registration ................................... 7.11(a)(4), 7.12
Combined applications ........................................................................................ 2.86
Combined inter partes proceedings:
Cancellation ............................................................................................... 2.112(b)
Opposition .................................................................................................. 2.104(b)
Commencement of cancellation .................................................................... 2.111(a)
Commencement of opposition ....................................................................... 2.101(a)
Communication with attorney or other representative ...................................... 2.18
Complaints against U.S. Patent and Trademark Office employees ................... 2.192
Compliance of applicant with other laws ............................................................ 2.69
Compliance with discovery order of Trademark Trial and Appeal
Board ....................................................................................................... 2.120(g)
Compulsory counterclaim ................................................. 2.106(b)(2)(i), 2.114(b)(2)(i)
Concurrent use registration......................................................................... 2.42, 2.99
Amendment to seek.......................................................................................... 2.73
Answer to notice of concurrent use proceeding, by whom and
when ....................................................................................................... 2.99(d)
Application requirements ................................................................................ 2.42
Based upon court determination .................................................................. 2.99(f)
Burden of proving entitlement to ................................................................ 2.99(e)
Consideration and determination by Trademark Trial and Appeal
Board ........................................................................................ 2.99(h), 2.133(c)
Examination by Examiner ..................................................................... 2.99(a), (b)
Intent-to-use applications, when subject to ......................................... 2.73. 2.99(g)
Mark must first be published for opposition purposes ................................. 2.99(b)
Notice of concurrent use proceeding...................................................... 2.99(c), (d)
369
Registrations and applications to register on Supplemental Register

and registrations under Act of 1920 not subject to ................................. 2.99(g)
Request to divide application during concurrent use proceeding............. 2.87(c)(1)
Conduct of practitioners......................................................................... 11.101-11.901
Conference, pre-trial, in inter partes cases .................................................. 2.120(i)(2)
Conference, telephone, in inter partes cases ................................................ 2.120(i)(1)
Confidential matters ............................................................. 2.27(e), 2.125(e), 2,126(c)
Conflict of interest, attorney .......................................... 2.61(c), 11.107, 11.108, 11.111
Conflicting marks, co-pending applications for........................................... 2.83, 2.91
Consent of applicant or authorized representative to withdrawal of oppo-
sition after answer................................................................................... 2.106(c)
Consent of opposer to abandonment of application or mark ............................. 2.135
Consent of petitioner to surrender or voluntary cancellation of registra-
tion .............................................................................................................. 2.134
Consent of registrant or authorized representative to withdrawal of can-
cellation after answer.............................................................................. 2.114(c)
Consolidated inter partes proceedings:
Filing consolidated petition to cancel........................................................ 2.112(b)
Filing consolidated opposition ................................................................... 2.104(b)
Times for filing briefs ............................................................................. 2.128(a)(2)
Times for taking testimony.................................................................... 2.121(b)(2)
Constructive use, entry of judgment subject to establishment of in inter
partes proceedings .................................................................................... 2.129(d)
Contested or inter partes cases ................................................................ 2.116 et seq.
Copies of registrations and records.............................................................. 2.6, 2.201
Correction of informalities by amendment ......................................................... 2.71
Correction of mistake in certificate of registration:
Mistake by U.S. Patent and Trademark Office............................................... 2.174
Mistake by registrant ..................................................................................... 2.175
Mistake in international registration.............................................................. 7.22
Correspondence, addresses for ..................................................................... 2.190, 7.4
Correspondence, with whom held ................................................... 2.18, 2.24, 2.119(d)
Counterclaim in opposition and cancellation........................... 2.106(b)(2), 2.114(b)(2)
Court determination as basis for concurrent use registration ........................ 2.99(f)
Courtesy and decorum in dealing with U.S. Patent and Trademark Of-
fice ............................................................................................................... 2.192
Court of Appeals for the Federal Circuit, U.S., appeal to .................................. 2.145
D
Date of first use and first use in commerce:
Amendment of .............................................................................................. 2.71(c)
Required in amendment to allege use ........................................... 2.76(b)(1)(ii), (c)
Required in statement of use ........................................................ 2.88(b)(1)(ii), (c)
Required in use applications under sec. l(a) .......................... 2.34(a)(1)(ii) and (iii)
Date of use allegation in application or registration not evidence on be-
half of applicant or registrant in inter partes case ............................... 2.122(b)(2)
Declaration in lieu of oath or verification .......................................................... 2.20
Declaration of interference ................................................................................. 2.91
Default judgment for failure to offer evidence in inter partes pro-
ceeding..................................................................................................... 2.132(a)
Delay in responding to official action ................................................................. 2.66
Deposit accounts for paying fees ....................................................................... 2.208
Depositions, discovery, in inter partes cases:
Domestic party ........................................................................................... 2.120(b)
Foreign party or representative ................................................................. 2.120(c)
Motion to compel attendance ..................................................................... 2.120(e)
Nonparty .................................................................................................... 2.120(b)
370
Index II
Time for taking .......................................................................................... 2.120(a)

Use of .......................................................................................................... 2.120(j)
When to file with Trademark Trial and Appeal Board ............................ 2.120(j)(8)
Depositions, discovery or trial testimony, upon written questions................... 2.124
Depositions, trial testimony.............................................................................. 2.123
Before whom taken..................................................................................... 2.123(d)
Certification and filing ............................................................................... 2.123(f)
Corresponds to the trial in court proceedings ............................................ 2.116(e)
Effect of errors and irregularities ............................................................... 2.123(j)
Examination of witnesses ........................................................................... 2.123(e)
Filing and service of testimony transcript ..................................................... 2.125
Form of depositions .................................................................................... 2.123(g)
Inspection of depositions ................................................................. 2.27(d), 2.123(i)
Manner of taking ........................................................................................ 2.123(a)
Must be filed............................................................................................... 2.123(h)
Notice of taking.......................................................................................... 2.123(c)
Protective order relating to transcript or exhibits .................................... 2.125(e)
Raising of objections ...................................................................... 2.123(e), (j), (k)
Stipulations concerning ............................................................................. 2.123(b)
Taken in foreign country........................................................................ 2.123(a)(2)
Timing ............................................................................................................ 2.121
Description of mark in application ..................................................... 2.37, 2.52(b)(5)
Amendment to.................................................................................................. 2.72
Designation of representative by foreign applicant, registrant, or party:
Application....................................................................................................... 2.24
Assignment ...................................................................................................... 3.61
In inter partes proceeding ............................................................................ 2.119(d)
Diligence, requirement for ............................................................. 2.66(a)(2), 2.146(i)
Director of United States Patent and Trademark Office:
May suspend certain rules ................................................................. 2.146(a), 2.148
Petition to ...................................................................................................... 2.146
Disciplinary Proceedings.......................................................................... 11.19 -11.62
Disclaimer:
During inter partes cases ................................................................................. 2.133
In part, of registered mark ............................................................................. 2.173
Disclosures:
Expert disclosures .................................................................................. 2.120(a)(2)
Failure to make .......................................................................................... 2.120(e)
Filing with Board .............................................................................. 2.120(j)(5), (8)
Initial disclosures ............................................................................. 2.120(a)(2), (3)
Motion to compel........................................................................................ 2.120(e)
Protective order .......................................................................................... 2.120(f)
Sanctions ................................................................................................ 2.120(g)(2)
Discovery depositions. See Depositions, discovery, in inter partes cases.
Discovery procedure .......................................................................................... 2.120
Automatic disclosure and discovery provisions of Federal Rules of
Civil Procedure applicable.................................................................... 2.120(a)
Discovery conference.................................................................................. 2.120(a)
Discovery deposition of domestic party ..................................................... 2.120(b)
Discovery deposition of foreign party......................................................... 2.120(c)
Discovery provisions of Federal Rules of Civil Procedure apply except
as otherwise provided ........................................................................... 2.120(a)
Failure to comply with discovery order of Trademark Trial and Appeal
Board .................................................................................................... 2.120(g)
Interrogatories ....................................................................................... 2.120(d)(1)
Motion for order to compel discovery........................................ 2.120(d)(1), 2.120(e)
Motion for a protective order...................................................................... 2.120(f)
Place of production of documents and things......................................... 2.120(d)(2)
371
Pre-trial conference ................................................................................ 2.120(i)(2)

Proceeding suspended pending decision on motion to compel ................ 2.120(e)(2)
Request for admissions............................................................................... 2.120(h)
Sanctions for failure to comply with discovery order of Trademark
Trial and Appeal Board ........................................................................ 2.120(g)
Telephone conference .............................................................................. 2.120(i)(1)
Time for discovery...................................................................................... 2.120(a)
Use of discovery deposition, answer to interrogatory, or admission .......... 2.120(j)
When to file discovery materials with Trademark Trial and Appeal
Board ................................................................................................. 2.120(j)(8)
Dismissal:
For failure to file brief on appeal to Trademark Trial and Appeal
Board ................................................................................................ 2.142(b)(1)
For failure to take testimony or offer other evidence in inter partes
case ........................................................................................................... 2.132
Distinctiveness under sec. 2(f), proof of............................................................... 2.41
Dividing an application ....................................................................................... 2.87
Dividing a registration .................................................................................. 2.171(b)
Domestic representative of foreign applicant, registrant, or party:
Application....................................................................................................... 2.24
Assignment ...................................................................................................... 3.61
In inter partes proceeding ............................................................................ 2.119(d)
Domicile of applicant .................................................................................. 2.32(a)(3)
Drawing ........................................................................................................ 2.51-2.54
Amendment to mark in .................................................................................... 2.72
Color in .................................................................................................... 2.52(b)(1)
Drawings required ............................................................................................ 2.51
Electronically filed............................................................................... 2.52(c), 2.53
Paper ................................................................................................................ 2.54
Requirements for drawing ......................................................................... 2.52-2.54
Standard character drawing ........................................................................ 2.52(a)
Typed drawing. See Standard character drawing
Duplicate registrations, Office does not issue ..................................................... 2.48
Duration of registration:
Cancellation for failure to file affidavit or declaration of use under sec.
8 ................................................................................................................ 2.160
Cancellation for failure to file affidavit or declaration of use under sec.
71 ................................................................................................................ 7.36
Renewal........................................................................................... 2.181-2.186, 7.41
Term of original registrations and renewals .................................................. 2.181
E
Electronic filing with Trademark Trial and Appeal Board ........................... 2.126(b)
Emergencies or interruptions in United States Postal Service..................... 2.195(e)
‘‘Entity’’, defined.............................................................................................. 2.2(b)
Entry of judgment, in inter partes proceeding, subject to establishment
of constructive use .................................................................................. 2.129(d)
Evidence in ex parte appeal after notice of appeal ......................................... 2.142(d)
Evidence in inter partes proceeding ............................................................ 2.122-2.125
Affidavits, stipulated testimony, and stipulated facts ............................... 2.123(b)
Allegations of use and specimens in applications and registrations ...... 2.122(b)(2)
Discovery responses .................................................................................... 2.120(j)
Exhibits attached to pleadings ................................................................... 2.122(c)
Files of applications or registrations which are subject matter of pro-
ceeding.............................................................................................. 2.122(b)(1)
Official records ........................................................................................... 2.122(e)
Printed publications ................................................................................... 2.122(e)
372
Index II
Registration owned by any party to proceeding ..................................... 2.122(d)(2)

Registration pleaded by opposer or petitioner ....................................... 2.122(d)(1)
Rules of evidence ........................................................................................ 2.122(a)
Testimony from other proceedings between parties ................................... 2.122(f)
Testimony upon oral examination.................................................................. 2.123
Testimony upon written questions ................................................................. 2.124
Evidence of distinctiveness ................................................................................. 2.41
Examination of applications ............................................................................... 2.61
Examination of witnesses in inter partes proceeding...................................... 2.123(e)
Examiner’s appearance at ex parte appeal oral hearing ............................. 2.142(e)(2)
Examiner’s brief on appeal ............................................................................ 2.142(b)
Examiner’s jurisdiction over an application ....................................................... 2.84
Exhibits attached to pleadings as evidence ................................................... 2.122(c)
Forwarded to defendant by Trademark Trial and Appeal Board ........... 2.105, 2.113
Exhibits, testimony, filing and service of.......................................................... 2.125
Ex parte appeal. (See Appeal to Trademark Trial and Appeal Board)
Ex parte matter disclosed but not tried in inter partes case ............................... 2.131
Express abandonment of application or mark:
During examination procedure......................................................................... 2.68
‘‘ExpressMail’’ procedure for filing of papers and fees....................................... 2.198
Express surrender or cancellation of registration:
Requirements for ............................................................................................ 2.172
Extension of protection of international registration to United
States ..................................................................................................... 7.25-7.41
Affidavit of continued use or excusable nonuse required after registra-
tion ...................................................................................................... 7.36-7.40
Assignment of .................................................................................................. 7.23
Basis for registration ................................................................... 2.34(a)(5), 2.35(a)
Certificate of registration ....................................................................... 2.151, 7.28
Definitions of terms........................................................................................... 7.1
Effect of cancellation or expiration of international registration................... 7.30
Filing date........................................................................................................ 7.26
Not registrable on Supplemental Register ....................................... 2.47(c), 2.75(c)
Part 2 rules applicable ................................................................................. 7.25(a)
Part 3 rules do not apply .................................................................................. 7.22
Priority claim .................................................................................................. 7.27
Renewal ............................................................................................................ 7.41
Registered extension of protection cannot be amended under Section 7
of the Act ............................................................................................... 7.25(a)
Replacement of U.S. registration by ........................................................ 7.28, 7.29
Trademark Rules of Practice applicable to...................................................... 7.25
Transformation to U.S. application ................................................ 2.195(d)(5), 7.31
Extension of time for discovery and testimony ................... 2.120(a), 2.121(a), (c), (d)
Extension of time for filing opposition.............................................................. 2.102
Extension of time for filing statement of use ..................................................... 2.89
Fee for filing request for.................................................................................... 2.6
Good cause showing, when necessary................................................. 2.89(b)(4), (d)
Request filed with statement of use............................................................. 2.89(e)
F
Facsimile transmission, certificate of..................................................... 2.197, 7.4(e)
Facsimile transmission of certain correspondence to U.S. Patent and
Trademark Office .......................................................... 2.195(a)(3), (c), (d), 7.4(d)
Facsimiles as specimens.................................................................................. 2.56(c)
Failure by appellant to file brief on ex parte appeal .................................. 2.142(b)(1)
373
Failure by Plaintiff to file brief at final hearing in inter partes pro-

ceeding................................................................................................. 2.128(a)(3)
Failure to answer opposition......................................................................... 2.106(a)
Failure to answer petition for cancellation .................................................. 2.114(a)
Failure to comply with discovery order ........................................................ 2.120(g)
Failure to comply with order relating to confidential testimony or ex-
hibits ....................................................................................................... 2.125(e)
Failure to file affidavit of use under sec. 8 or renewal application for reg-
istration in inter partes proceeding .......................................................... 2.134(b)
Failure to file brief on motion....................................................................... 2.127(a)
Failure to offer evidence other than U.S. Patent and Trademark Office
records ..................................................................................................... 2.132(b)
Failure to respond to official action ................................................................... 2.65
Failure to take testimony or offer other evidence ........................................ 2.132(a)
Failure to timely file a statement of use........................................................ 2.88(h)
Fax transmission, certificate of ........................................................................ 2.197
Fax transmission of certain correspondence to U.S. Patent and Trade-
mark Office.............................................................................. 2.195(a)(3), (c), (d)
Federal Rules of Civil Procedure...................................................... 2.116(a), 2.122(a)
Federal Rules of Evidence ............................................................................. 2.122(a)
Fees and charges...................................................................... 2.6, 2.206-2.209, 7.6, 7.7
For filing an application............................................................................ 2.6(a)(1)
For TEAS Plus application................................................... 2.6(a)(1)(iii), 2.21, 2.22
Payable to International Bureau ....................................................................... 7.7
Fees, insufficient amount submitted:
For application ........................................................................................ 2.21(a)(5)
For petition for cancellation ...................................................................... 2.111(c)
For ex parte appeal...................................................................................... 2.141(b)
For opposition ............................................................................................ 2.101(d)
For renewal application.................................................................................. 2.183
Fees, payment of ..................................................................... 2.6, 2.206-2.207, 7.6, 7.7
To International Bureau.................................................................................... 7.7
Filing an amendment to allege use ..................................................................... 2.76
Filing an extension of protection under 66(a) ............................................. 2.34(a)(5)
Filing an opposition........................................................................................... 2.101
Filing and service of trial testimony................................................................. 2.125
Filing date, effective, after amendment of sec. l(b) application to Supple-
mental Register ........................................................................................ 2.75(b)
Filing date of application ............................................................................ 2.21, 7.26
Filing of confidential papers ........................................................... 2.125(e), 2.126-(c)
Filing of papers electronically ...................................................................... 2.126(b)
Filing of papers and fees by Express Mail.......................................................... 2.198
Filing petition for cancellation ......................................................................... 2.111
Filing requests for extensions of time for filing statement of use ...................... 2.89
Filing statement of use after notice of allowance............................................... 2.88
Filing substitute specimens ................................................................................ 2.59
Final refusal of application................................................................................. 2.64
Filing amendment to allege use during final action response pe-
riod ......................................................................................................... 2.64(c)
Reconsideration of ....................................................................................... 2.64(a)
Final hearing, briefs at (inter partes proceeding) ............................................... 2.128
Foreign applicant, registrant, or party, designation of domestic rep-
resentative................................................................................ 2.24, 2.119(d), 3.61
Foreign application, priority claim based on ...................................... 2.34(a)(4), 7.27
Foreign registration:
Application based on, under sec. 44 .............................................. 2.34(a)(3), 2.47(b)
Copy of ................................................................................................ 2.34(a)(3)(ii)
Necessary before publication............................................................... 2.34(a)(3)(ii)
374
Index II
Form of amendment to application..................................................................... 2.74

Form of submissions to TTAB ........................................................................... 2.126
G
General information and correspondence ............................................ 2.190-2.198, 7.4
Goods and/or services identification of:
Additions not permitted .............................................................................. 2.71(a)
Amendment of.............................................................................................. 2.71(a)
Amendment of, filed with statement of use.................................................. 2.88(i)
In affidavit or declaration filed under sec. 8............................................... 2.161(e)
In affidavit or declaration filed under sec. 71............................................... 7.37(e)
In international application..................................................................... 7.11(a)(7)
In written application .............................................................................. 2.32(a)(6)
Multiple goods or services comprised in single class or multiple class-
es............................................................................. 2.32(a)(6), 2.34(a)(1)(v), 2.86
Required in amendment to allege use ................................................ 2.76(b)(1), (c)
Required in request for extension of time to file statement of use .... 2.89(a)(3), (f)
Required in statement of use........................................................ 2.88(b)(1), (c), (i)
Good cause, showing necessary for extension of time to file statement of
use................................................................................................... 2.89(b)(4), (d)
H
Hearing, oral:
At final hearing in inter partes proceeding ...................................................... 2.129
On appeal to Trademark Trial and Appeal Board ....................................... 2.142(e)
On motion in inter partes proceedings ......................................................... 2.127(a)
On petition to Director ............................................................................... 2.146(f)
I
Identification of goods and/or services. (See Goods and/or services identification
of)
Identification of pending application or registered mark in correspond-
ence.............................................................................................................. 2.194
Identification of prior registrations.................................................................... 2.36
Incontestability of right to use mark:
Affidavit under sec. 15..................................................................................... 2.167
Freedom from interference proceeding ........................................................ 2.91(b)
Informalities, amendment to correct .................................................................. 2.71
Intent-to-use applications under sec. 1(b):
Abandonment for failure to timely file a statement of use ......................... 2.65(c)
Amendment to allege use ................................................................................. 2.76
Amendments between notice of allowance and statement of use..................... 2.77
Basis for filing application............................................................................... 2.34
Bona fide intention to use mark in commerce necessary ..................... 2.34(a)(2)(i)
Certification mark ........................................................................................... 2.45
Collective mark................................................................................................ 2.44
Dividing............................................................................................................ 2.87
Drawing required .................................................................................. 2.32(c), 2.51
Extensions of time for filing statement of use ................................................. 2.89
Notice of allowance...................................................................................... 2.81(b)
Requirements for written application .............................................. 2.32, 2.34(a)(2)
Revival of application abandoned for failure to timely file a statement
of use .......................................................................................................... 2.66
Specimens filed with amendment to allege use or statement of
use ............................................................................................... 2.56, 2.76, 2.88
375
Statement of use .............................................................................................. 2.88

When eligible for concurrent use .................................................. 2.42, 2.73, 2.99(g)
When eligible for amendment to Supplemental Register ................. 2.47(d), 2.75(b)
Interlocutory motions, inter partes proceeding .................................................. 2.127
Interference ................................................................................... 2.91-2.93, 2.96, 2.98
Adding Party to interference ........................................................................... 2.98
Burden of proof................................................................................................. 2.96
Conflicting marks, co-pending applications for ............................................... 2.83
Declaration of interference .............................................................................. 2.91
Declared only on petition to Director.......................................................... 2.91(a)
Institution of interference ............................................................................... 2.93
Issue ................................................................................................................. 2.96
Marks must otherwise be deemed registrable .................................................. 2.92
Notice of interference ...................................................................................... 2.93
Preliminary to interference ............................................................................. 2.92
Registrations and applications on the Supplemental Register, registra-
tions under the Act of 1920, and registrations of incontestable
marks not subject to interference.......................................................... 2.91(b)
Request to divide application during interference ................................... 2.87(c)(1)
International application ............................................................................. 7.11-7.14
Address for mailing paper ................................................................ 2.190(a), 7.4(b)
Cannot be filed by fax................................................................... 2.195(d)(5), 7.4(d)
Certificate of mailing or transmission does not apply ................. 2.197(a)(2), 7.4(e)
Certification of................................................................................................. 7.13
Claim of color in............................................................................................... 7.12
Correspondence, receipt of................................................................................. 7.4
Fees for ........................................................................................................ 7.6, 7.7
Hand delivery of............................................................................................. 7.4(c)
Irregularities in ................................................................................. 7.4(b)(2), 7.14
Must be filed through TEAS or on International Bureau’s form ................. 7.11(a)
Must be in English ............................................................................................. 7.3
Requirements for.............................................................................................. 7.11
Subsequent designation.................................................................................... 7.21
International Bureau... 7.1, 7.7, 7.11, 7.13, 7.14, 7.21, 7.22, 7.23, 7.24, 7.26, 7.27, 7.30, 7.31,
7.36, 7.41, 11.9
Payment of fees to ............................................................................................. 7.7
International register, recording changes in. See also International reg-
istration ................................................................................................. 7.22-7.24
International registration ............................................................................. 7.1-7.41
Application for. See International application.
Assignment of .................................................................................................. 7.23
Cancellation of.......................................................................................... 7.30, 7.31
Correspondence must be in English ................................................................... 7.3
Extension of protection to United States. See Extension of protection of inter-
national registration to United States
Priority claim .................................................................................................. 7.27
Recording changes in................................................................................. 7.22-7.24
Renewal of ........................................................................................................ 7.41
Replacement ............................................................................................. 7.28, 7.29
Restriction on holder’s right to dispose of ....................................................... 7.24
Subsequent designation.................................................................................... 7.21
Inter partes procedure................................................................................. 2.116-2.136
Inter partes proceedings ............................................................................... 2.91-2.136
Cancellation ........................................................................................... 2.111-2.115
Concurrent use ................................................................................................. 2.99
Failure of plaintiff to file brief at final hearing ..................................... 2.128(a)(3)
376
Index II
Failure of plaintiff to take testimony ............................................................ 2.132

Interference ................................................................................ 2.91-2.93, 2.96, 2.98
Opposition .............................................................................................. 2.101-2.107
Procedure in ........................................................................................... 2.116-2.136
Interrogatories (discovery) ................................................................................ 2.120
Motion for an order to compel answer....................................... 2.120(d)(1), 2.120(e)
Numerical limit on ................................................................................. 2.120(d)(1)
Timing of .................................................................................................... 2.120(a)
Use of answers ............................................................................................. 2.120(j)
When to file copy of interrogatories and answers thereto with Trade-
mark Trial and Appeal Board............................................................ 2.120(j)(8)
Interruptions or emergencies in United States Postal Service ..................... 2.195(e)
Irregularities in application for international registration. (See International ap-
plication, irregularities in)
Issue date of the notice of allowance .............................................................. 2.81(b)
J
Judgment by default:
Failure by plaintiff to file brief at final hearing .................................... 2.128(a)(3)
Failure to answer cancellation................................................................... 2.114(a)
Failure to answer notice of concurrent use proceeding ........................... 2.99(d)(3)
Failure to answer opposition...................................................................... 2.106(a)
Failure to take testimony or offer other evidence ......................................... 2.132
Judgment, entry of in inter partes proceeding subject to establishment of
constructive use ...................................................................................... 2.129(d)
Jurisdiction over published applications ............................................................ 2.84
Amendment after publication of mark ........................................................ 2.84(b)
Amendment during inter partes proceeding ..................................................... 2.133
Remand to Examiner by Trademark Trial and Appeal Board ............... 2.130, 2.131
L
Lawyers. (See Attorneys)
Letter, separate for each distinct subject of inquiry .................................... 2.193(h)
Letters, address for mailing to U.S. Patent and Trademark Office ................... 2.190
M
Madrid Protocol. (See International registration, international application)
Mailing, certificate of........................................................................................ 2.197
Mailing address for correspondence with U.S. Patent and Trademark Of-
fice..................................................................................................... 2.190, 7.4(b)
Marks on Supplemental Register published only upon registration ................... 2.82
Marks registered under 1905 Act. claiming benefits of 1946 Act................. 2.153-2.156
Marks under sec. 12(c) not subject to opposition; subject to cancella-
tion .............................................................................................................. 2.156
Matters in evidence in inter partes cases ............................................................ 2.122
Mistake in registration incurred through fault of applicant............................. 2.175
Mistake in registration incurred through fault of U.S. Patent and Trade-
mark Office .................................................................................................. 2.174
Money, payment of ........................................................................ 2.206-2.209, 7.6, 7.7
Motions in inter partes proceedings:
Briefs on .................................................................................... 2.127(a), 2.127(e)(1)
Contents ..................................................................................................... 2.127(a)
Failure to respond to motion ..................................................................... 2.127(a)
For a protective order ................................................................................. 2.120(f)
For judgment for failure to take testimony ................................................... 2.132
For summary judgment .............................................................................. 2.127(e)
377
Interlocutory motions and requests, who may act on ................................ 2.127(c)

Request for reconsideration of decision on motion .................................... 2.127(b)
Suspension pending determination of motion potentially dispositive of
proceeding ............................................................................................ 2.127(d)
To add application to interference ................................................................... 2.98
To compel discovery .................................................................. 2.120(d)(1), 2.120(e)
To determine sufficiency of answer or objection to request for admis-
sion ....................................................................................................... 2.120(h)
To extend discovery period......................................................................... 2.120(a)
To extend times for taking testimony upon written questions .............. 2.124(d)(2)
To extend trial periods ......................................................................... 2.121(a), (c)
To suspend ...................................................................................................... 2.117
To take oral deposition abroad.............................................. 2.120(c)(1), 2.123(a)(2)
To use testimony from another proceeding between parties ...................... 2.122(f)
Unavailable remedies .................................................................................. 2.127(f)
Multiple class applications ..................................................... 2.32(a)(6), 2.34(a)(1)(v)
Dividing of........................................................................................................ 2.87
Multiple goods or services comprised in single class or multiple class-
es ................................................................................................................... 2.86
Dividing of........................................................................................................ 2.87
N
New certificate on change of ownership ............................................................ 2.171
Notice by publication, undelivered Office notices ............................................. 2.118
Notice of allowance......................................................................................... 2.81(b)
Filing statement of use after ........................................................................... 2.88
Issue date of ................................................................................................. 2.81(b)
Notice of appeal to court and civil action ......................................................... 2.145
Notice of appeal to Trademark Trial and Appeal Board................................ 2.142(a)
Notice of concurrent use proceeding......................................................... 2.99(c), (d)
Notice of claim of benefits of 1946 Act ....................................................... 2.153-2.156
Notice of election by appellee to proceed by civil action after appeal to
U.S. Court of Appeals for the Federal Circuit...................................... 2.145(c)(3)
Notice of interference ......................................................................................... 2.93
Notice of publication under sec. 12(c) ................................................................ 2.155
Notice of reliance on discovery ...................................................................... 2.120(j)
Notice of reliance on printed publications and official records ..................... 2.122(e)
Notice to Trademark Trial and Appeal Board of civil action .................... 2.145(c)(4)
Notice, where address of registrant in cancellation proceeding is un-
known .......................................................................................................... 2.118
Notification of acceptance of or deficiency in amendment to allege
use ....................................................................................................... 2.76(f), (g)
Notification of acceptance of or deficiency in statement of use ............... 2.88(f), (g)
Notification of filing of petition for cancellation.............................................. 2.113
Notification of grant or denial of request for an extension of time to file
a statement of use..................................................................................... 2.89(g)
Notification of opposition.................................................................................. 2.105
O
Oath, declaration in lieu of ................................................................................. 2.20
Oaths, before whom and when made in testimonial deposition ................. 2.123(e)(5)
Official Gazette contents:
Claim of benefits under sec. 12(c) for marks registered under 1905
Act ............................................................................................................ 2.154
First filed of applications for conflicting marks.............................................. 2.83
Marks on Principal Register published for opposition ..................................... 2.80
Marks on Supplemental Register published when registered........................... 2.82
378
Index II
Official records, reliance on in inter partes proceeding .................................. 2.122(e)

Omission of matter from response to Examiner’s action ................................ 2.65(b)
Opposition to registration of mark on Principal Register: ....................... 2.101-2.107
Amendment of opposition ............................................................................... 2.107
Answer ............................................................................................................ 2.106
Commencement of opposition .................................................................... 2.101(a)
Consolidated oppositions ............................................................................ 2.104(b)
Contents of opposition .................................................................................... 2.104
Corresponds to complaint in a court proceeding ........................................ 2.116(c)
Discovery ........................................................................................................ 2.120
Documents not returnable ............................................................................... 2.25
Extension of time for filing an opposition ...................................................... 2.102
Failure to timely answer ............................................................................ 2.106(a)
Filing an opposition........................................................................................ 2.101
Insufficient fees .......................................................................................... 2.101(d)
Notification of opposition............................................................................... 2.105
Procedure, inter partes ............................................................................ 2.116-2.136
Request to divide application during opposition...................................... 2.87(c)(1)
Suspension of proceedings .............................................................................. 2.117
Time for filing opposition........................................................................... 2.101(c)
Who may file opposition ............................................................................. 2.101(b)
Withdrawal of opposition............................................................................ 2.106(c)
Oral argument at final hearing in inter partes proceeding ................................. 2.129
Oral hearing:
Ex parte appeal ............................................................................................ 2.142(e)
Inter partes proceedings ......................................................... 2.116(f), 2.127(a), 2.129
On petition to Director ............................................................................... 2.146(f)
Oral promise, stipulation, or understanding...................................................... 2.191
Ownership, prior registrations, identification in application ............................. 2.36
P
Payment of money................................................................... 2.6, 2.206-2.209, 7.6, 7.7
Pending application index................................................................................... 2.27
Period for response to Office actions................................................................... 2.62
Personal appearance unnecessary...................................................................... 2.191
Persons who may practice before the U.S. Patent and Trademark Office
in trademark cases ...................................................................................... 11.14
Petition for cancellation ........................................................................... 2.111-2.115
Amendment of petition................................................................................... 2.115
Answer ............................................................................................................ 2.114
Commencement of cancellation proceeding ............................................... 2.111(a)
Contents of petition........................................................................................ 2.112
Corresponds to complaint in a court proceeding ........................................ 2.116(c)
Discovery ........................................................................................................ 2.120
Failure to timely answer............................................................................ 2.114(a)
Filing petition for cancellation ...................................................................... 2.111
Insufficient fees .......................................................................................... 2.111(c)
Notification of cancellation proceeding ......................................................... 2.113
Procedure, inter partes ............................................................................ 2.116-2.136
Suspension of proceedings .............................................................................. 2.117
Time for filing petition .............................................................................. 2.111(b)
Who may file petition................................................................................. 2.111(b)
Withdrawal of petition ............................................................................... 2.114(c)
Petition for rehearing, reconsideration or modification of decision:
Decision in inter partes proceeding.............................................................. 2.129(c)
Decision on ex parte appeal ............................................................................. 2.144
Decision on interlocutory motion in inter partes proceeding ...................... 2.127(b)
379
Petition to revive abandoned application ........................................................... 2.66

Petition to the Director..................................................................................... 2.146
Any case not specifically defined and provided for by rules ................... 2.146(a)(4)
Contents of petition.................................................................................... 2.146(c)
Delegation of authority to act on petitions ............................................... 2.146(h)
Diligence, requirement for .......................................................................... 2.146(i)
Extraordinary situation requiring suspension or waiver of requirement
of rules.............................................................................................. 2.146(a)(5)
Fee ........................................................................................................ 2.6, 2.146(c)
From denial of request for extension of time to file statement of
use .......................................................................................................... 2.89(g)
From grant or denial of request for extension of time to oppose ........... 2.146(e)(1)
From interlocutory order of Trademark Trial and Appeal Board .......... 2.146(e)(2)
Invoke supervisory authority ................................................................. 2.146(a)(3)
Oral hearing on petition.............................................................................. 2.146(f)
Reconsideration of decision on petition...................................................... 2.146(j)
Reconsideration of refusal to accept sec. 8 affidavit or declaration........... 2.165(b)
Refusal of renewal of registration .................................................................. 2.186
Relief from repeated formal requirement of Examiner............... 2.63(b), 2.146(a)(1)
Review of adverse action on correction, disclaimer, surrender, etc. of
registration............................................................................................... 2.176
Stays time in appeal, inter partes proceeding, or reply to Office action
only when stay is specifically requested and granted .......................... 2.146(g)
Subject matter for petitions ................................................................ 2.146(a), (b)
Time to file petition ............................................................................. 2.146(d), (e)
To accord filing date as of date of deposit as Express Mail ............................ 2.198
Pleading, amendment of ........................................................................... 2.107, 2.115
Position of parties in inter partes proceedings ............................ 2.96, 2.99(e), 2.116(b)
Postal Service, United States, interruptions or emergencies in ................... 2.195(e)
Post notice of allowance .............................................................................. 2.88, 2.89
Post publication .................................................................................................. 2.81
Power of attorney or authorization of other representative ....................... 2.17, 2.19
Practice before the U.S. Patent and Trademark Office, individuals enti-
tled to .......................................................................................................... 11.14
Predecessor in title or related company, use by ................................................. 2.38
Pre-trial conference, inter partes proceeding .............................................. 2.120(i)(2)
Principal Register ............................................................................................... 2.46
Amendment to or from Supplemental Register ............................................... 2.75
Printed publications, as evidence in inter partes proceedings ........................ 2.122(e)
Prior acts, status of prior registrations ............................................................ 2.158
Priority claim based on foreign application ........................................ 2.34(a)(4), 7.27
Prior registrations, ownership, identification in application ............................. 2.36
Procedure in inter partes cases ................................................................... 2.116-2.136
Production of documents and things, request for (discovery) ........................... 2.120
Place of production................................................................................. 2.120(d)(2)
Motion for an order to compel production.................................................. 2.120(e)
Timing of .................................................................................................... 2.120(a)
Professional conduct of attorneys .......................................................... 11.101-11.901
Proof of distinctiveness under sec. 2(f)................................................................ 2.41
Proof of service.............................................................................................. 2.119(a)
Protective order:
Access to materials filed under .................................................................... 2.27(e)
Form of filing materials under ................................................................... 2.126(c)
Relating to discovery .................................................................................. 2.120(f)
Relating to testimony ................................................................................ 2.125(e)
Sanctions for violation.................................................................. 2.120(g), 2.125(e)
Publication and post publication ................................................................. 2.80-2.84
Publication in Official Gazette:
380
Index II
Jurisdiction over published applications ......................................................... 2.84

Of claim of benefits under sec. 12(c) for marks registered under 1905
Act ............................................................................................................ 2.154
Of first filed of applications for conflicting marks .......................................... 2.83
Of mark on Principal Register for opposition after approval........................... 2.80
Of marks on Supplemental Register when registered ...................................... 2.82
Publication, notice by, undelivered Office notices to registrant in inter
partes proceeding.......................................................................................... 2.118
R
Rebuttal testimony ............................................................................. 2.121(b)(1), (c)
Receipt of papers and fees ................................................................... 2.195-2.198, 7.4
Recognition of attorneys or other authorized person ................................ 2.17, 11.14
Reconsideration:
Of affidavit or declaration of use under sec. 8 ............................... 2.163(b), 2.165(a)
Of decision after final hearing in inter partes proceeding............................ 2.129(c)
Of decision on ex parte appeal ......................................................................... 2.144
Of decision on petition to Director ............................................................. 2.146(j)
Of decision on petition to revive................................................................... 2.66(f)
Of final action .............................................................................................. 2.64(b)
Of order or decision on interlocutory motion............................................. 2.127(b)
Records of documents in Assignment Services Division of U.S. Patent
and Trademark Office ............................................................................. 3.11-3.56
Records and files of the U.S. Patent and Trademark Office....................... 2.27, 2.200
Reexamination of application ............................................................................. 2.63
Reexamination of application after remand by the Trademark Trial and
Appeal Board ............................................................................. 2.130, 2.131, 2.142
Refund of money paid to U.S. Patent and Trademark Office............................. 2.209
Refusal of affidavit or declaration of use under sec. 8 ....................................... 2.163
Refusal of affidavit or declaration of use under sec. 71 ....................................... 7.39
Refusal of registration ........................................................................................ 2.61
Refusal of renewal ............................................................................................. 2.184
Refusal of request for extension of time to file a statement of use ................ 2.89(g)
Registered extension of protection. (See Extension of protection of international
registration to United States)
Registrability of marks in plurality of classes (combined applica-
tions) ............................................................................................................. 2.86
Registrant claiming benefits of 1946 Act ................................................... 2.153-2.156
Registration as evidence in inter partes proceeding:
File of registration which is the subject of the proceeding .................... 2.122(b)(1)
Registration owned by any party to proceeding ..................................... 2.122(d)(2)
Registration pleaded by opposer or petitioner ....................................... 2.122(d)(1)
Registration records open to public inspection .............................................. 2.27(d)
Registrations, printed copies available ............................................................. 2.201
Related company or predecessor, use by ............................................................. 2.38
Remand to Examiner:
After decision in inter partes case ................................................................... 2.131
During appeal from refusal of registration ................................................. 2.142(f)
During inter partes case ................................................................................... 2.130
Renewal of registration...................................................................... 2.181-2.186, 7.41
Application for renewal, requirements ........................................................... 2.183
Failure to renew registration involved in inter partes proceeding .............. 2.134(b)
Of international registration ........................................................................... 7.41
Period in which to file .................................................................................... 2.182
Refusal of renewal .......................................................................................... 2.184
Review of Examiner’s refusal by Director ...................................................... 2.186
Term of original registrations and renewals .................................................. 2.181
381
Replacement ................................................................................................ 7.28, 7.29

Reply briefs in inter partes proceedings ......................................................... 2.127(a)
Representation by attorney ................................................................................ 2.11
Representation of others before the U.S. Patent and Trademark Of-
fice ....................................................................................................... 2.11, 11.14
Representative, domestic or U.S. (See Domestic representative)
Representation, recognition for ................................................................. 2.17, 11.14
Republication of marks registered under prior acts.................................. 2.153-2.156
Request for admissions (discovery). (See Admissions, request for)
Request for Extension of protection of international registration to United
States. (See Extension of protection of international registration to United
States)
Request for extension of time for discovery and testimony. (See Extension of time
for discovery and testimony)
Request for extension of time to file opposition. (See Extension of time for filing
opposition)
Request for extension of time to file statement of use. (See Extension of time to
file statement of use)
Request for information, exhibits, affidavits, declarations, and addi-
tional specimens by Examiner .................................................................. 2.61(b)
Request for production (discovery). (See Production of documents and things, re-
quest for)
Request for reconsideration. See Reconsideration.
Request for records ............................................................................................ 2.201
Request for registration.............................................................................. 2.32(a)(1)
Request to divide an application......................................................................... 2.87
Request to divide a registration .................................................................... 2.171(b)
Requirements for receiving a filing date ..................................................... 2.21, 7.26
Requirements for written application .......................................................... 2.32-2.34
Registration of marks registered under prior acts ............................................ 2.158
Response to official action .................................................................................. 2.62
Restriction on holder’s right to dispose of international registration................ 7.24
Review by Director:
For relief from repeated formal requirement by Examiner ......................... 2.63(b)
Of adverse action on correction, disclaimer, surrender, etc. of registra-
tion ........................................................................................................... 2.176
Of refusal of affidavit or declaration of use under sec. 8................................. 2.165
Of refusal of affidavit or declaration of use under sec. 71................................. 7.40
Of refusal of renewal application .................................................................... 2.186
Petitions to the Director ................................................................................ 2.146
Revival of abandoned applications ...................................................................... 2.66
Revocation of power of attorney ......................................................................... 2.19
Rules of evidence in inter partes cases ........................................................... 2.122(a)
Rules of practice in trademark cases:
Suspension, petition to Director ................................................... 2.146(a)(5), 2.148
Waiver, petition to Director .......................................................... 2.146(a)(5), 2.148
S
Sanction for failure to comply with discovery order..................................... 2.120(g)
Sanction for failure to comply with protective order relating to testi-
mony ........................................................................................................ 2.125(e)
Saturday, Sunday, or Federal holiday, time for taking action expiring
on ........................................................................................................ 2.195, 2.196
Schedule of classes of goods and services................................................. 2.85, 6.1-6.4
Schedule of time for discovery and trial periods .................................. 2.120(a), 2.121
Sec. 2(f), proof of distinctiveness......................................................................... 2.41
382
Index II
Sec. 8 affidavit or declaration of use ......................................................... 2.160-2.166

Sec. 44, application based on:
Amendment to change application to different register.............................. 2.75(a)
Amendment to description or drawing in mark ........................................... 2.72(c)
Basis for filing.................................................................................................. 2.34
Certification mark ....................................................................................... 2.45(b)
Collective mark ........................................................................................... 2.44(b)
Drawing required.......................................................................................... 2.32(c)
Goods or services identified may not exceed scope of those in foreign
application or registration................................................................. 2.32(a)(6)
Priority claim .......................................................................................... 2.34(a)(4)
Requirements for drawings........................................................................ 2.52-2.54
Requirements for written application ....................................................... 2.32-2.34
Supplemental Register................................................................................. 2.47(b)
Sec. 71 affidavit or declaration of use........................................................... 7.36-7.40
Service charge for filing renewal application during grace period .............. 2.6, 2.185
Services marks .................................................................................................... 2.43
Specimens or facsimiles ............................................................................... 2.56(c)
Service of copies of testimony ........................................................................... 2.125
Service and signing of papers ............................................................................ 2.119
Signature and certificate of attorney................................................................ 11.18
Signature of applicant......................................................................................... 2.33
Signature of electronically-filed document................................................... 2.193(c)
Single certificate for one mark registered in a plurality of classes................ 2.86(c)
Specimens .................................................................................................... 2.56, 2.59
Electronically-filed ................................................................. 2.56(d)(4), 2.161(g)(3)
Facsimiles in lieu of specimens.................................................................... 2.56(c)
Not evidence on behalf of applicant or registrant in inter partes pro-
ceeding.............................................................................................. 2.122(b)(2)
Of service mark ........................................................................................ 2.56(a)(2)
Requirement of filing with affidavit or declaration of use under sec.
8 ............................................................................................................ 2.161(g)
Requirement of filing with affidavit or declaration of use under sec.
71 ............................................................................................................ 7.37(g)
Requirement of filing with amendment to allege use .................... 2.76(b)(2), (e)(2)
Requirement of filing with statement of use ................................. 2.88(b)(2), (e)(2)
Support of amendment to application ...................................................... 2.71, 2.72
Support of amendment to registration ........................................................... 2.173
Statement of use ................................................................................................. 2.88
Amendments to description or drawing of mark after filing ................... 2.72(b)(1)
Amendments to dates of use after filing .................................................. 2.71(c)(2)
Extensions of time to file ................................................................................. 2.89
Fee for filing ...................................................................................................... 2.6
May not be withdrawn ................................................................................. 2.88(g)
Minimum requirements for filing ................................................................ 2.88(e)
Requirements for ......................................................................................... 2.88(b)
Time for filing.............................................................................................. 2.88(a)
Status of application after ex parte appeal .................................................... 2.142(g)
Status of application on termination of inter partes proceedings ...................... 2.136
Stipulated evidence, inter partes cases........................................................... 2.123(b)
Stipulation to extend discovery and/or trial periods............................ 2.120(a), 2.121
Subsequent designation....................................................................................... 7.21
Address for mailing paper .............................................................. , 2.190(a), 7.4(b)
Cannot be filed by fax................................................................... 2.195(d)(5), 7.4(d)
Certificate of mailing or transmission does not apply ................. 2.197(a)(2), 7.4(e)
Fees for .............................................................................................. 7.7, 7.21(b)(8)
Must be filed through TEAS or on International Bureau’s form ................. 7.21(b)
383
Substitute specimens, filing of............................................................................ 2.59

Summary judgments in inter partes proceedings........................................ 2.127(e)(1)
Sunday, Saturday, or Federal holiday, time for taking action expiring
on ........................................................................................................ 2.195, 2.196
Supplemental Register:
Amendment from Principal Register................................................ 2.47(c), 2.75(c)
Application requirements ................................................................................ 2.47
Approval ........................................................................................................... 2.82
Cancellation.................................................................................................... 2.111
Certificate of registration ................................................................................ 2.82
Intent-to-use applications, when eligible..................................................... 2.47(d)
Marks published when registered ..................................................................... 2.82
Marks in request for extension of protection of international registra-
tion not registrable on................................................................ 2.47(c), 2.75(c)
Surrender of certificate of registration ............................................................. 2.172
Suspension of action in application by U.S. Patent and Trademark Of-
fice ................................................................................................................ 2.67
Suspension from practice before U.S. Patent and Trademark Office ....... 11.11; 11.25
Suspension of later filed conflicting application ................................................ 2.83
Suspension of inter partes proceedings by Trademark Trial and Appeal Board:
For good cause upon motion or stipulation .............................................2.117(c)
Pending disposition of motion potentially dispositive of case ................2.127(d)
Pending disposition of motion to compel.............................................2.120(e)(2)
Pending disposition of motion to test sufficiency of response to re-
quest for admission ........................................................................2.120(h)(2)
Pending termination of civil action or other Board proceeding ..............2.117(a)
Suspension of rules, Director............................................................ 2.146(a)(5), 2.148
T
TEAS................................. 2.2(f), 2.6(a)(1)(ii), 2.52(c), 2.56(d)(4), 2.161(g)(3), 2.193(a)(2)
Application filing fee ................................................................................. 2.6(a)(1)
Definition of ................................................................................................... 2.2(f)
Drawing ................................................................................................ 2.52(c), 2.53
Signature ........................................................................................................ 2.193
Specimen................................................................................. 2.56(d)(4), 2.161(g)(3)
TEAS Plus ............................................................................... 2.6(a)(1)(iii), 2.22, 2.23
Term of original registrations and renewals ..................................................... 2.181
Testimony in inter partes cases:
Assignment and resetting of times ................................................................. 2.121
By oral examination ....................................................................................... 2.123
By written questions ...................................................................................... 2.124
Failure to take ............................................................................................... 2.132
Filing and service of testimony ............................................. 2.123(f), 2.124(f), 2.125
Arrangement, indexing, and form of transcript ..................2.123(g); 2.125 (b), (d)
Corrections to..............................................................................2.124(f), 2.125(b)
Deposition must be filed ..........................................................................2.123(h)
Filing in U.S. Patent and Trademark Office...................2.123(f), 2.124(f), 2.125(c)
Inspection of deposition ...........................................................................2.123(i)
Service on adverse party .............................................................2.124(f), 2.125(a)
From another proceeding ............................................................................ 2.122(f)
In foreign countries ................................................................................ 2.123(a)(2)
Objections to .............................................................. 2.123 (e), (j), (k); 2.124(d), (g)
Stipulated testimony ................................................................................. 2.123(b)
Time:
For amendment ................................................................................................ 2.62
For ex parte appeal...................................................................................... 2.142(a)
384
Index II
For filing affidavit or declaration to avoid cancellation ................ 2.160(a), 7.36(b)

For filing amendment to allege use ............................................................. 2.76(a)
For filing appeal to court or civil action.................................................... 2.145(d)
For filing briefs in inter partes proceedings..................................................... 2.127
For filing extension of time to oppose ............................................................ 2.102
For filing opposition................................................................................... 2.101(c)
For filing petition for cancellation .................................................. 2.111(b), (c)(3)
For filing request for extension of time to file statement of use ..................... 2.89
For filing request to divide application ....................................................... 2.87(c)
For filing statement of use .......................................................................... 2.88(a)
For response to U.S. Patent and Trademark Office action .............................. 2.62
For taking discovery .................................................................................. 2.120(a)
For taking testimony ..................................................................................... 2.121
Transformation .............................................. 2.195(d)(5), 2.197(a)(2)(ii), 7.4(b)(2), 7.31
Translation of assignment .................................................................................. 3.26
Transmission, certificate of............................................................................... 2.197
U
Undelivered Office notices, to registrant........................................................... 2.118
Unprofessional conduct, attorneys ......................................................... 11.101-11.901
Unprovided for and extraordinary circumstances, petition to Direc-
tor .................................................................................................. 2.146(a)(4), (5)
U.S. Court of Appeals for the Federal Circuit, appeal to ................................... 2.145
Use:
Allegation of use in commerce .......................................................... 2.34, 2.76, 2.88
Amendment to allege use in commerce............................................................ 2.76
Bona fide intention to use in commerce ................................................... 2.34, 2.89
By predecessor or by related companies........................................................... 2.38
Dates of first use and first use in commerce.......................... 2.34(a)(1)(ii) and (iii)
Statement of use .............................................................................................. 2.88
Use of discovery ............................................................................................. 2.120(j)
V
Verification:
Declaration in lieu of oath or verification ....................................................... 2.20
In support of amendments to descriptions or drawings of the
mark........................................................................................................... 2.72
In support of amendments to dates of use.................................................... 2.71(c)
In support of request for extension of time to file statement of
use .............................................................................................................. 2.89
Of application................................................................................................... 2.33
Of electronically-filed document .................................................................... 2.193
Required with amendment to allege use ........................................ 2.76(b)(1), (e)(3)
Required with statement of use ..................................................... 2.88(b)(1), (e)(3)
Required with substitute specimens ................................................................ 2.59
W
Waiver of rule, petition to Director.................................................. 2.146(a)(5), 2.148
Willful false statements.declaration ................................................................... 2.20
Withdrawal from employment, practitioners ........................................... 2.19, 11.116
Withdrawal of amendment to allege use......................................................... 2.76(h)
Withdrawal of application ................................................................................... 2.68
Involved in inter partes proceeding.................................................................. 2.135
Withdrawal of opposition with or without consent ....................................... 2.106(c)
Withdrawal of cancellation with or without consent .................................... 2.114(c)
Withdrawal of registration by voluntary surrender by registrant:
385
Involved in cancellation proceeding ............................................................... 2.134

Requirements for ............................................................................................ 2.172
Withdrawal of statement of use prohibited..................................................... 2.88(g)
Witnesses:
Discovery deposition ............................................................................ 2.120(b), (c)
Examination by oral deposition (Testimony) ................................................. 2.123
Examination by written questions ................................................................. 2.124
Foreign ...................................................................................... 2.120(c), 2.123(a)(2)
Written application ...................................................................................... 2.32-2.47
386
PRACTICE BEFORE THE PATENT 11.24 Reciprocal discipline.
11.25 Interim suspension and discipline
AND TRADEMARK OFFICE based upon conviction of committing a
serious crime.
PART 10 [RESERVED] 11.26 Settlement.
11.27 Exclusion on consent.
11.28 Incapacitated practitioners in a dis-
PART 11—REPRESENTATION OF ciplinary proceeding.
OTHERS BEFORE THE UNITED 11.29 Reciprocal transfer or initial transfer
STATES PATENT AND TRADEMARK to disability inactive status.
OFFICE 11.30–11.31 [Reserved]
11.32 Instituting a disciplinary proceeding.
11.33 [Reserved]
Subpart A—General Provisions
11.34 Complaint.
GENERAL INFORMATION 11.35 Service of complaint.
11.36 Answer to complaint.
Sec. 11.37 [Reserved]
11.1 Definitions. 11.38 Contested case.
11.2 Director of the Office of Enrollment
11.39 Hearing officer; appointment; respon-
and Discipline.
sibilities; review of interlocutory orders;
11.3 Suspension of rules.
stays.
11.40 Representative for OED Director or re-
Subpart B—Recognition To Practice Before
spondent.
the USPTO 11.41 Filing of papers.
PATENTS, TRADEMARKS, AND OTHER NON- 11.42 Service of papers.
PATENT LAW 11.43 Motions.
11.44 Hearings.
11.4 [Reserved] 11.45 Amendment of pleadings.
11.5 Register of attorneys and agents in pat- 11.46–11.48 [Reserved]
ent matters; practice before the Office. 11.49 Burden of proof.
11.6 Registration of attorneys and agents. 11.50 Evidence.
11.7 Requirements for registration. 11.51 Depositions.
11.8 Oath and registration fee. 11.52 Discovery.
11.9 Limited recognition in patent matters.
11.53 Proposed findings and conclusions;
11.10 Restrictions on practice in patent
post-hearing memorandum.
matters.
11.54 Initial decision of hearing officer.
11.11 Administrative suspension, inactiva-
11.55 Appeal to the USPTO Director.
tion, resignation, and readmission.
11.12–11.13 [Reserved] 11.56 Decision of the USPTO Director.
11.14 Individuals who may practice before 11.57 Review of final decision of the USPTO
the Office in trademark and other non- Director.
patent matters. 11.58 Duties of disciplined or resigned prac-
11.15 Refusal to recognize a practitioner. titioner.
11.16 Requirements for admission to the 11.59 Dissemination of disciplinary and
USPTO Law School Clinic Certification other information.
Program. 11.60 Petition for reinstatement.
11.17 Requirements for participation in the 11.61–11.99 [Reserved]
USPTO Law School Clinic Certification
Program. Subpart D—USPTO Rules of Professional
11.18 Signature and certificate for cor- Conduct
respondence filed in the Office.
11.100 [Reserved]
Subpart C—Investigations and Disciplinary CLIENT-PRACTITIONER RELATIONSHIP
Proceedings; Jurisdiction, Sanctions,
Investigations, and Proceedings 11.101 Competence.
11.102 Scope of representation and alloca-
11.19 Disciplinary jurisdiction; Jurisdiction tion of authority between client and
to transfer to disability inactive status. practitioner.
11.20 Disciplinary sanctions; Transfer to 11.103 Diligence.
disability inactive status. 11.104 Communication.
11.21 Warnings. 11.105 Fees.

11.22 Disciplinary investigations. 11.106 Confidentiality of information.
11.23 Committee on Discipline. 11.107 Conflict of interest; Current clients.
387
§ 11.1 37 CFR Ch. I (7–1–16 Edition)
11.108 Conflict of interest; Current clients; INFORMATION ABOUT LEGAL SERVICES
Specific rules.
11.701 Communications concerning a practi-
11.109 Duties to former clients.
tioner’s services.
11.110 Imputation of conflicts of interest;
11.702 Advertising.
General rule.
11.111 Former or current Federal Govern- 11.703 Direct contact with prospective cli-
ment employees. ents.
11.112 Former judge, arbitrator, mediator or 11.704 Communication of fields of practice
other third-party neutral. and specialization.
11.113 Organization as client. 11.705 Firm names and letterheads.
11.114 Client with diminished capacity. 11.706–11.800 [Reserved]
11.115 Safekeeping property. MAINTAINING THE INTEGRITY OF THE
11.116 Declining or terminating representa- PROFESSION
tion.
11.117 Sale of law practice. 11.801 Registration, recognition and dis-
11.118 Duties to prospective client. ciplinary matters.
11.119–11.200 [Reserved] 11.802 Judicial and legal officials.
11.803 Reporting professional misconduct.
COUNSELOR 11.804 Misconduct.
11.201 Advisor. 11.805–11.900 [Reserved]
11.202 [Reserved] 11.901 Savings clause.
11.203 Evaluation for use by third persons. AUTHORITY: 5 U.S.C. 500; 15 U.S.C. 1123; 35
11.204 Practitioner serving as third-party U.S.C. 2(b)(2), 32, 41; Sec. 1, Pub. L. 113–227,
neutral. 128 Stat. 2114.
11.205–11.300 [Reserved]
SOURCE: 69 FR 35452, June 24, 2004, unless
ADVOCATE otherwise noted.
11.301 Meritorious claims and contentions.
11.302 Expediting proceedings. Subpart A—General Provisions
11.303 Candor toward the tribunal.
11.304 Fairness to opposing party and coun- GENERAL INFORMATION
sel.
11.305 Impartiality and decorum of the tri- § 11.1 Definitions.
bunal.
This part governs solely the practice
11.306 Trial publicity.
11.307 Practitioner as witness.
of patent, trademark, and other law be-
11.308 [Reserved] fore the United States Patent and
11.309 Advocate in nonadjudicative pro- Trademark Office. Nothing in this part
ceedings. shall be construed to preempt the au-
11.310–11.400 [Reserved] thority of each State to regulate the
practice of law, except to the extent
TRANSACTIONS WITH PERSONS OTHER THAN
necessary for the United States Patent
CLIENTS
and Trademark Office to accomplish
11.401 Truthfulness in statements to others. its Federal objectives. Unless otherwise
11.402 Communication with person rep- clear from the context, the following
resented by a practitioner. definitions apply to this part:
11.403 Dealing with unrepresented person.
11.404 Respect for rights of third persons.
Attorney or lawyer means an indi-
11.405–11.500 [Reserved] vidual who is an active member in good
standing of the bar of the highest court
LAW FIRMS AND ASSOCIATIONS of any State. A non-lawyer means a
11.501 Responsibilities of partners, man- person who is not an attorney or law-
agers, and supervisory practitioners. yer.
11.502 Responsibilities of a subordinate Belief or believes means that the per-
practitioner. son involved actually supposed the fact
11.503 Responsibilities regarding non-practi- in question to be true. A person’s belief
tioner assistance. may be inferred from circumstances.
11.504 Professional independence of a practi-
Confirmed in writing, when used in ref-
tioner.
11.505 Unauthorized practice of law. erence to the informed consent of a
11.506 Restrictions on right to practice. person, means informed consent that is
given in writing by the person or a
11.507 Responsibilities regarding law-re-

lated services. writing that a practitioner promptly
11.508–11.700 [Reserved] transmits to the person confirming an
388
oral informed consent. If it is not fea- lished by a purposeful omission or fail-

sible to obtain or transmit the writing ure to state a material fact, which
at the time the person gives informed omission or failure to state makes
consent, then the practitioner must ob- other statements misleading, and
tain or transmit it within a reasonable where the other elements of justifiable
time thereafter. reliance and injury are established.
Conviction or convicted means any Good moral character and reputation
confession to a crime; a verdict or means the possession of honesty and
judgment finding a person guilty of a truthfulness, trustworthiness and reli-
crime; any entered plea, including nolo ability, and a professional commitment
contendre or Alford plea, to a crime; or to the legal process and the adminis-
receipt of deferred adjudication tration of justice, as well as the condi-
(whether judgment or sentence has tion of being regarded as possessing
been entered or not) for an accused or such qualities.
pled crime. Grievance means a written submis-
Crime means any offense declared to sion from any source received by the
be a felony or misdemeanor by Federal OED Director that presents possible
or State law in the jurisdiction where grounds for discipline of a specified
the act occurs. practitioner.
Data sheet means a form used to col- Informed consent means the agree-
lect the name, address, and telephone ment by a person to a proposed course
information from individuals recog- of conduct after the practitioner has
nized to practice before the Office in communicated adequate information
patent matters. and explanation about the material
Disqualified means any action that risks of and reasonably available alter-
prohibits a practitioner from partici- natives to the proposed course of con-
pating in or appearing before the product.
gram or agency, regardless of how long Knowingly, known, or knows means
the prohibition lasts or the specific ter- actual knowledge of the fact in ques-
minology used. tion. A person’s knowledge may be in-
Federal agency means any authority ferred from circumstances.
of the executive branch of the Govern- Law-related services means services
ment of the United States. that might reasonably be performed in
Federal program means any program conjunction with and in substance are
established by an Act of Congress or related to the provision of legal serv-
administered by a Federal agency. ices, and that are not prohibited as un-
Firm or law firm means a practitioner authorized practice of law when pro-
or practitioners in a law partnership, vided by a non-lawyer.
professional corporation, sole propri- OED means the Office of Enrollment
etorship or other association author- and Discipline.
ized to practice law; or practitioners OED Director means the Director of
employed in a legal services organiza- the Office of Enrollment and Dis-
tion or the legal department of a cor- cipline.
poration or other organization. OED Director’s representatives means
Fiscal year means the time period attorneys within the USPTO Office of
from October 1st through the ensuing General Counsel who act as representa-
September 30th. tives of the OED Director.
Fraud or fraudulent means conduct Office means the United States Pat-
that involves a misrepresentation of ent and Trademark Office.
material fact made with intent to de- Partner means a member of a partner-
ceive or a state of mind so reckless re- ship, a shareholder in a law firm orga-
specting consequences as to be the nized as a professional corporation, or
equivalent of intent, where there is jus- a member of an association authorized
tifiable reliance on the misrepresenta- to practice law.
tion by the party deceived, inducing Person means an individual, a cor-
the party to act thereon, and where poration, an association, a trust, a
there is injury to the party deceived re- partnership, and any other organiza-
sulting from reliance on the misrepre- tion or legal entity.

sentation. Fraud also may be estab- Practitioner means:
389
§ 11.1 37 CFR Ch. I (7–1–16 Edition)
(1) An attorney or agent registered to (2) Any crime a necessary element of

practice before the Office in patent which, as determined by the statutory
matters; or common law definition of such
(2) An individual authorized under 5 crime in the jurisdiction where the
U.S.C. 500(b), or otherwise as provided crime occurred, includes interference
by § 11.14(a), (b), and (c), to practice be- with the administration of justice,
fore the Office in trademark matters or false swearing, misrepresentation,
other non-patent matters; fraud, willful failure to file income tax
(3) An individual authorized to prac- returns, deceit, bribery, extortion, mis-
tice before the Office in a patent case appropriation, theft, or an attempt or a
or matters under § 11.9(a) or (b); or conspiracy or solicitation of another to
(4) An individual authorized to prac- commit a ‘‘serious crime.’’
tice before the Office under § 11.16(d). Significant evidence of rehabilitation
Proceeding before the Office means an means satisfactory evidence that is sig-
application for patent, an application nificantly more probable than not that
for reissue, a reexamination, a protest, there will be no recurrence in the fore-
a public use matter, an inter partes pat- seeable future of the practitioner’s
ent matter, correction of a patent, cor- prior disability or addiction.
rection of inventorship, an application State means any of the 50 states of
to register a trademark, an inter partes the United States of America, the Dis-
trademark matter, an appeal, a peti- trict of Columbia, and any Common-
tion, and any other matter that is wealth or territory of the United
pending before the Office. States of America.
Reasonable or reasonably when used in Substantial when used in reference to
relation to conduct by a practitioner degree or extent means a material
means the conduct of a reasonably pru- matter of clear and weighty impor-
dent and competent practitioner. tance.
Reasonable belief or reasonably believes Suspend or suspension means a tem-
when used in reference to a practi- porary debarring from practice before
tioner means that the practitioner be- the Office or other jurisdiction.
lieves the matter in question and that Tribunal means the Office, a court, an
the circumstances are such that the be- arbitrator in a binding arbitration pro-
lief is reasonable. ceeding or a legislative body, adminis-
Reasonably should know when used in trative agency or other body acting in
reference to a practitioner means that an adjudicative capacity. A legislative
a practitioner of reasonable prudence body, administrative agency or other
and competence would ascertain the body acts in an adjudicative capacity
matter in question. when a neutral official, after the pres-
Registration means registration to entation of evidence or legal argument
practice before the Office in patent by a party or parties, will render a
proceedings. binding legal judgment directly affect-
Roster means a list of individuals who ing a party’s interests in a particular
have been registered as either a patent matter.
attorney or patent agent. United States means the United
Screened means the isolation of a States of America, and the territories
practitioner from any participation in and possessions the United States of
a matter through the timely imposi- America.
tion of procedures within a firm that USPTO Director means the Director of
are reasonably adequate under the cir- the United States Patent and Trade-
cumstances to protect information mark Office, or an employee of the Of-
that the isolated practitioner is obli- fice delegated authority to act for the
gated to protect under these USPTO Director of the United States Patent
Rules of Professional Conduct or other and Trademark Office in matters aris-
law. ing under this part.
Serious crime means: Writing or written means a tangible or
(1) Any criminal offense classified as electronic record of a communication
a felony under the laws of the United or representation, including hand-
States, any state or any foreign coun- writing, typewriting, printing,

try where the crime occurred; or photostating, photography, audio or
390
video recording and electronic commu- (5) With the consent of a panel of
nications. A ‘‘signed’’ writing includes three members of the Committee on
an electronic sound, symbol or process Discipline, initiate disciplinary pro-
attached to or logically associated ceedings under § 11.32 and perform such
with a writing and executed or adopted other duties in connection with inves-
by a person with the intent to sign the tigations and disciplinary proceedings
writing. as may be necessary.
[69 FR 35452, June 24, 2004, as amended at 73 (6) Oversee the preliminary screening
FR 47687, Aug. 14, 2008; 77 FR 45251, July 31, of information and close investigations
2012; 78 FR 20197, Apr. 3, 2013; 81 FR 33596, as provided for in § 11.22.
May 27, 2016] (7) [Reserved]
§ 11.2 Director of the Office of Enroll- (c) Petition to OED Director regarding
ment and Discipline. enrollment or recognition. Any petition
from any action or requirement of the
(a) Appointment. The USPTO Director staff of OED reporting to the OED Di-
shall appoint a Director of the Office of rector shall be taken to the OED Direc-
Enrollment and Discipline (OED Direc- tor accompanied by payment of the fee
tor). In the event of a vacancy in the set forth in § 1.21(a)(5)(i) of this chap-
office of the OED Director, the USPTO ter. Any such petition not filed within
Director may designate an employee of sixty days from the mailing date of the
the Office to serve as acting OED Di-
action or notice from which relief is re-
rector. The OED Director shall be an
quested will be dismissed as untimely.
active member in good standing of the
The filing of a petition will neither
bar of the highest court of a State.
stay the period for taking other action
(b) Duties. The OED Director shall:
which may be running, nor stay other
(1) Supervise staff as may be nec-
proceedings. The petitioner may file a
essary for the performance of the OED
single request for reconsideration of a
Director’s duties.
(2) Receive and act upon applications decision within thirty days of the date
for registration, prepare and grade the of the decision. Filing a request for re-
examination provided for in § 11.7(b), consideration stays the period for seek-
maintain the register provided for in ing review of the OED Director’s deci-
§ 11.5, and perform such other duties in sion until a final decision on the re-
connection with enrollment and rec- quest for reconsideration is issued.
ognition of attorneys and agents as (d) Review of OED Director’s decision
may be necessary. regarding enrollment or recognition. A
(3) Conduct investigations into the party dissatisfied with a final decision
moral character and reputation of any of the OED Director regarding enroll-
individual seeking to be registered as ment or recognition shall seek review
an attorney or agent, or of any indi- of the decision upon petition to the
vidual seeking limited recognition, USPTO Director accompanied by pay-
deny registration or recognition of in- ment of the fee set forth in
dividuals failing to demonstrate pos- § 1.21(a)(5)(ii) of this chapter. By filing
session of good moral character and such petition to the USPTO Director,
reputation, and perform such other du- the party waives any right to seek re-
ties in connection with enrollment consideration from the OED Director.
matters and investigations as may be Any petition not filed within thirty
necessary. days after the final decision of the OED
(4) Conduct investigations of matters Director may be dismissed as untimely.
involving possible grounds for dis- Briefs or memoranda, if any, in support
cipline of practitioners coming to the of the petition shall accompany the pe-
attention of the OED Director. Except tition. The petition will be decided on
in matters meriting summary dis- the basis of the record made before the
missal, no disposition under § 11.22(h) OED Director. The USPTO Director in
shall be recommended or undertaken deciding the petition will consider no
by the OED Director until the accused new evidence. Copies of documents al-
practitioner shall have been afforded ready of record before the OED Direc-
an opportunity to respond to a reason- tor shall not be submitted with the pe-
able inquiry by the OED Director. tition. An oral hearing will not be
391
§ 11.3 37 CFR Ch. I (7–1–16 Edition)
granted except when considered nec- constitutes a final decision for the pur-
essary by the USPTO Director. Any repose of judicial review.
quest for reconsideration of the deci- [69 FR 35452, June 24, 2004, as amended at 73
sion of the USPTO Director may be dis- FR 47687, Aug. 14, 2008; 78 FR 20198, Apr. 3,
missed as untimely if not filed within 2013]
thirty days after the date of said deci-
sion. Only a decision of the USPTO Di- § 11.3 Suspension of rules.
rector regarding denial of a petition (a) In an extraordinary situation,
constitutes a final decision for the pur- when justice requires, any requirement
pose of judicial review. of the regulations of this Part which is
(e) Petition to USPTO Director in dis- not a requirement of statute may be
ciplinary matters. A party dissatisfied suspended or waived by the USPTO Di-
with any action or notice of any em- rector or the designee of the USPTO
ployee of the Office of Enrollment and Director, sua sponte, or on petition by
Discipline during or at the conclusion any party, including the OED Director
of a disciplinary investigation shall or the OED Director’s representative,
seek review of the action or notice subject to such other requirements as
upon petition to the OED Director. A may be imposed.
petition from any action or notice of (b) No petition under this section
the staff reporting to the OED Director shall stay a disciplinary proceeding un-
shall be taken to the OED Director. A less ordered by the USPTO Director or
party dissatisfied with the OED Direc- a hearing officer.
tor’s final decision shall seek review of
[73 FR 47688, Aug. 14, 2008]
the final decision upon petition to the
USPTO Director to invoke the super-
visory authority of the USPTO Direc- Subpart B—Recognition To
tor in appropriate circumstances in Practice Before the USPTO
disciplinary matters. Any petition
PATENTS, TRADEMARKS, AND OTHER
under this paragraph must contain a
NON-PATENT LAW
statement of the facts involved and the
point or points to be reviewed and the § 11.4 [Reserved]
action requested. Briefs or memoranda,
if any, in support of the petition must § 11.5 Register of attorneys and agents
accompany the petition. Where facts in patent matters; practice before
are to be proven, the proof in the form the Office.
of affidavits or declarations (and exhib- (a) A register of attorneys and agents
its, if any) must accompany the peti- is kept in the Office on which are en-
tion. The OED Director may be di- tered the names of all individuals rec-
rected by the USPTO Director to file a ognized as entitled to represent appli-
reply to the petition to the USPTO Di- cants having prospective or immediate
rector, supplying a copy to the peti- business before the Office in the prepa-
tioner. An oral hearing on petition ration and prosecution of patent appli-
taken to the USPTO Director will not cations. Registration in the Office
be granted except when considered nec- under the provisions of this part shall
essary by the USPTO Director. The fil- entitle the individuals so registered to
ing of a petition under this paragraph practice before the Office only in pat-
will not stay an investigation, discipli- ent matters.
nary proceeding, or other proceedings. (b) Practice before the Office. Practice
Any petition under this part not filed before the Office includes, but is not
within thirty days of the mailing date limited to, law-related service that
of the action or notice from which re- comprehends any matter connected
lief is requested may be dismissed as with the presentation to the Office or
untimely. Any request for reconsider- any of its officers or employees relat-
ation of the decision of the OED Direc- ing to a client’s rights, privileges, du-
tor or the USPTO Director may be dis- ties, or responsibilities under the laws
missed as untimely if not filed within or regulations administered by the Of-
thirty days after the date of said deci- fice for the grant of a patent or reg-
sion. Only a decision of the USPTO Di- istration of a trademark, or for enroll-
rector regarding denial of a petition ment or disciplinary matters. Such
392
presentations include preparing nec- ceeding before the Office, and when
essary documents in contemplation of drafting the assignment the practi-
filing the documents with the Office, tioner does no more than replicate the
corresponding and communicating with terms of a previously existing oral or
the Office, and representing a client written obligation of assignment from
through documents or at interviews, one person or party to another person
hearings, and meetings, as well as com- or party.
municating with and advising a client (2) Practice before the Office in trade-
concerning matters pending or con- mark matters. Practice before the Office
templated to be presented before the in trademark matters includes, but is
Office. Nothing in this section pro- not limited to, consulting with or giv-
scribes a practitioner from employing ing advice to a client in contemplation
or retaining non-practitioner assist- of filing a trademark application or
ants under the supervision of the prac- other document with the Office; pre-
titioner to assist the practitioner in paring and prosecuting an application
matters pending or contemplated to be for trademark registration; preparing
presented before the Office. an amendment which may require writ-
(1) Practice before the Office in patent ten argument to establish the
matters. Practice before the Office in registrability of the mark; and con-
patent matters includes, but is not lim- ducting an opposition, cancellation, or
ited to, preparing and prosecuting any concurrent use proceeding; or con-
patent application, consulting with or ducting an appeal to the Trademark
giving advice to a client in contempla- Trial and Appeal Board.
tion of filing a patent application or
other document with the Office, draft- [73 FR 47688, Aug. 14, 2008, as amended at 77
FR 46629, Aug. 6, 2012]
ing the specification or claims of a pat-
ent application; drafting an amend- § 11.6 Registration of attorneys and
ment or reply to a communication agents.
from the Office that may require writ-
ten argument to establish the patent- (a) Attorneys. Any citizen of the
ability of a claimed invention; drafting United States who is an attorney and
a reply to a communication from the who fulfills the requirements of this
Office regarding a patent application; part may be registered as a patent at-
and drafting a communication for a torney to practice before the Office.
public use, interference, reexamination When appropriate, any alien who is an
proceeding, petition, appeal to or any attorney, who lawfully resides in the
other proceeding before the Patent United States, and who fulfills the re-
Trial and Appeal Board, or other pro- quirements of this part may be reg-
ceeding. Registration to practice be- istered as a patent attorney to practice
fore the Office in patent cases sanc- before the Office, provided that such
tions the performance of those services registration is not inconsistent with
which are reasonably necessary and in- the terms upon which the alien was ad-
cident to the preparation and prosecu- mitted to, and resides in, the United
tion of patent applications or other States and further provided that the
proceeding before the Office involving alien may remain registered only:
a patent application or patent in which (1) If the alien continues to lawfully
the practitioner is authorized to par- reside in the United States and reg-
ticipate. The services include: istration does not become inconsistent
(i) Considering the advisability of re- with the terms upon which the alien
lying upon alternative forms of protec- continues to lawfully reside in the
tion which may be available under United States, or
state law, and (2) If the alien ceases to reside in the
(ii) Drafting an assignment or caus- United States, the alien is qualified to
ing an assignment to be executed for be registered under paragraph (c) of
the patent owner in contemplation of this section. See also § 11.9(b).
filing or prosecution of a patent appli- (b) Agents. Any citizen of the United
cation for the patent owner, where the States who is not an attorney, and who
practitioner represents the patent fulfills the requirements of this part

owner after a patent issues in a pro- may be registered as a patent agent to
393
§ 11.7 37 CFR Ch. I (7–1–16 Edition)
practice before the Office. When appro- the patent agent from the register and
priate, any alien who is not an attor- publish the fact of removal.
ney, who lawfully resides in the United (d) Patent Trial and Appeal Board mat-
States, and who fulfills the require- ters. For action by a person who is not
ments of this part may be registered as registered in a proceeding before the
a patent agent to practice before the Patent Trial and Appeal Board, see
Office, provided that such registration § 41.5(a) or § 42.10(c) of this title.
is not inconsistent with the terms upon [69 FR 35452, June 24, 2004, as amended at 69
which the alien was admitted to, and FR 50003, Aug. 12, 2004; 77 FR 46629, Aug. 6,
resides in, the United States, and fur- 2012]
ther provided that the alien may re-
main registered only: § 11.7 Requirements for registration.
(1) If the alien continues to lawfully (a) No individual will be registered to
reside in the United States and reg- practice before the Office unless he or
istration does not become inconsistent she has:
with the terms upon which the alien (1) Applied to the USPTO Director in
continues to lawfully reside in the writing by completing an application
United States or for registration form supplied by the
(2) If the alien ceases to reside in the OED Director and furnishing all re-
United States, the alien is qualified to quested information and material; and
be registered under paragraph (c) of (2) Established to the satisfaction of
this section. See also § 11.9(b). the OED Director that he or she:
(c) Foreigners. Any foreigner not a (i) Possesses good moral character
resident of the United States who shall and reputation;
file proof to the satisfaction of the (ii) Possesses the legal, scientific,
OED Director that he or she is reg- and technical qualifications necessary
istered and in good standing before the for him or her to render applicants val-
patent office of the country in which uable service; and
he or she resides and practices, and (iii) Is competent to advise and assist
who is possessed of the qualifications patent applicants in the presentation
stated in § 11.7, may be registered as a and prosecution of their applications
patent agent to practice before the Of- before the Office.
fice for the limited purpose of pre- (b)(1) To enable the OED Director to
senting and prosecuting patent applica- determine whether an individual has
tions of applicants located in such the qualifications specified in para-
country, provided that the patent of- graph (a)(2) of this section, the indi-
fice of such country allows substan- vidual shall:
tially reciprocal privileges to those ad- (i) File a complete application for
mitted to practice before the Office. registration each time admission to
Registration as a patent agent under the registration examination is re-
this paragraph shall continue only dur- quested. A complete application for
ing the period that the conditions spec- registration includes:
ified in this paragraph obtain. Upon no- (A) An application for registration
tice by the patent office of such coun- form supplied by the OED Director
try that a patent agent registered wherein all requested information and
under this section is no longer reg- supporting documents are furnished,
istered or no longer in good standing (B) Payment of the fees required by
before the patent office of such coun- § 1.21(a)(1) of this subchapter,
try, and absent a showing of cause why (C) Satisfactory proof of scientific
his or her name should not be removed and technical qualifications, and
from the register, the OED Director (D) For aliens, provide proof that rec-
shall promptly remove the name of the ognition is not inconsistent with the
patent agent from the register and pub- terms of their visa or entry into the
lish the fact of removal. Upon ceasing United States;
to reside in such country, the patent (ii) Pass the registration examina-
agent registered under this section is tion, unless the taking and passing of
no longer qualified to be registered the examination is waived as provided
under this section, and the OED Direc- in paragraph (d) of this section. Unless
tor shall promptly remove the name of examination is waived pursuant to
394
paragraph (d) of this section, each indi- tion is signed by the individual, and
vidual seeking registration must take the date he or she is registered or rec-
and pass the registration examination ognized to practice before the Office in
to enable the OED Director to deter- patent matters. The update shall be
mine whether the individual possesses filed within thirty days after the date
the legal and competence qualifica- of the occasion that necessitates the
tions specified in paragraphs (a)(2)(ii) update.
and (a)(2)(iii) of this section. An indi- (d) Waiver of the Registration Examina-
vidual failing the examination may, tion for Former Office Employees—(1)
upon receipt of notice of failure from Former patent examiners who by July 26,
OED, reapply for admission to the ex- 2004, had not actively served four years in
amination. An individual failing the the patent examining corps, and were
examination must wait thirty days
serving in the corps at the time of their
after the date the individual last took
separation. The OED Director may
the examination before retaking the
waive the taking of a registration ex-
examination. An individual reapplying
amination in the case of any individual
shall:
(A) File a completed application for meeting the requirements of paragraph
registration form wherein all requested (b)(1)(i)(C) of this section who is a
information and supporting documents former patent examiner but by July 26,
are furnished, 2004, had not served four years in the
(B) Pay the fees required by patent examining corps, if the indi-
§ 1.21(a)(1) of this subchapter, and vidual demonstrates that he or she:
(C) For aliens, provide proof that rec- (i) Actively served in the patent ex-
ognition is not inconsistent with the amining corps of the Office and was
terms of their visa or entry into the serving in the corps at the time of sep-
United States; and aration from the Office;
(iii) Provide satisfactory proof of pos- (ii) Received a certificate of legal
session of good moral character and competency and negotiation authority;
reputation. (iii) After receiving the certificate of
(2) An individual failing to file a legal competency and negotiation au-
complete application for registration thority, was rated at least fully suc-
will not be admitted to the examina- cessful in each quality performance
tion and will be notified of the incom- element of his or her performance plan
pleteness. Applications for registration for the last two complete fiscal years
that are incomplete as originally sub- as a patent examiner; and
mitted will be considered only when (iv) Was not under an oral or written
they have been completed and received warning regarding the quality perform-
by OED, provided that this occurs
ance elements at the time of separa-
within sixty days of the mailing date of
tion from the patent examining corps.
the notice of incompleteness. There-
after, a new and complete application (2) Former patent examiners who on
for registration must be filed. Only an July 26, 2004, had actively served four
individual approved as satisfying the years in the patent examining corps, and
requirements of paragraphs (b)(1)(i)(A), were serving in the corps at the time of
(b)(1)(i)(B), (b)(1)(i)(C) and (b)(1)(i)(D) of their separation. The OED Director may
this section may be admitted to the ex- waive the taking of a registration ex-
amination. amination in the case of any individual
(3) If an individual does not reapply meeting the requirements of paragraph
until more than one year after the (b)(1)(i)(C) of this section who is a
mailing date of a notice of failure, that former patent examiner and by July 26,
individual must again comply with 2004, had served four years in the pat-
paragraph (b)(1)(i) of this section. ent examining corps, if the individual
(c) Each individual seeking registra- demonstrates that he or she:
tion is responsible for updating all in- (i) Actively served for at least four
formation and answers submitted in or years in the patent examining corps of
with the application for registration the Office by July 26, 2004, and was
based upon anything occurring between serving in the corps at the time of sep-
the date the application for registra- aration from the Office;
395
§ 11.7 37 CFR Ch. I (7–1–16 Edition)
(ii) Was rated at least fully success- chapter within two years of the indi-
ful in each quality performance ele- vidual’s date of separation from the Of-
ment of his or her performance plan for fice. All other individuals formerly em-
the last two complete fiscal years as a ployed by the Office, including former
patent examiner in the Office; and examiners, filing an application for
(iii) Was not under an oral or written registration or fee more than two years
warning regarding the quality perform- after separation from the Office, are re-
ance elements at the time of separa- quired to take and pass the registra-
tion from the patent examining corps. tion examination. The individual or
(3) Certain former Office employees who former examiner must pay the exam-
were not serving in the patent examining ination fee required by § 1.21(a)(1)(ii) of
corps upon their separation from the Of- this subchapter within thirty days
fice. The OED Director may waive the after notice of non-waiver.
taking of a registration examination in
(e) Examination results. Notification
the case of a former Office employee
of the examination results is final.
meeting the requirements of paragraph
Within sixty days of the mailing date
(b)(1)(i)(C) of this section who by peti-
tion demonstrates possession of the of a notice of failure, the individual is
necessary legal qualifications to render entitled to inspect, but not copy, the
to patent applicants and others valu- questions and answers he or she incor-
able service and assistance in the prep- rectly answered. Review will be under
aration and prosecution of their appli- supervision. No notes may be taken
cations or other business before the Of- during such review. Substantive review
fice by showing that he or she has: of the answers or questions may not be
(i) Exhibited comprehensive knowl- pursued by petition for regrade. An in-
edge of patent law equivalent to that dividual who failed the examination
shown by passing the registration ex- has the right to retake the examina-
amination as a result of having been in tion an unlimited number of times
a position of responsibility in the Of- upon payment of the fees required by
fice in which he or she: § 1.21(a)(1)(i) and (ii) of this subchapter,
(A) Provided substantial guidance on and a fee charged by a commercial en-
patent examination policy, including tity administering the examination.
the development of rule or procedure (f) Application for reciprocal recogni-
changes, patent examination guide- tion. An individual seeking reciprocal
lines, changes to the Manual of Patent recognition under § 11.6(c), in addition
Examining Procedure, development of to satisfying the provisions of para-
training or testing materials for the graphs (a) and (b) of this section, and
patent examining corps, or develop- the provisions of § 11.8(c), shall pay the
ment of materials for the registration application fee required by § 1.21(a)(1)(i)
examination or continuing legal edu- of this subchapter upon filing an appli-
cation; or cation for registration.
(B) Represented the Office in patent
(g) Investigation of good moral char-
cases before Federal courts; and
acter and reputation. (1) Every indi-
(ii) Was rated at least fully success-
ful in each quality performance ele- vidual seeking recognition shall answer
ment of his or her performance plan for all questions in the application for reg-
said position for the last two complete istration and request(s) for comments
rating periods in the Office, and was issued by OED; disclose all relevant
not under an oral or written warning facts, dates and information; and pro-
regarding such performance elements vide verified copies of documents rel-
at the time of separation from the Of- evant to his or her good moral char-
fice. acter and reputation. An individual
(4) To be eligible for consideration who is an attorney shall submit a cer-
for waiver, an individual formerly em- tified copy of each of his or her State
ployed by the Office within the scope of bar applications and moral character
one of paragraphs (d)(1), (d)(2) or (d)(3) determinations, if available.
of this section must file a complete ap- (2)(i) If the OED Director receives in-
plication for registration and pay the formation from any source that re-
fee required by § 1.21(a)(1)(i) of this sub- flects adversely on the good moral
396
character or reputation of an indi- a pardon or a satisfactory showing of

vidual seeking registration or recogni- reform and rehabilitation, and shall
tion, the OED Director shall conduct file with his or her application for reg-
an investigation into the good moral istration the fees required by
character and reputation of that indi- § 1.21(a)(1)(ii) and (a)(10) of this sub-
vidual. The investigation will be con- chapter. The OED Director shall deter-
ducted after the individual has passed mine whether individuals convicted of
the registration examination, or after said felony or misdemeanor provided
the registration examination has been satisfactory proof of reform and reha-
waived for the individual, as applica- bilitation.
ble. An individual failing to timely an-
(i) An individual who has been con-
swer questions or respond to an inquiry
victed of a felony or a misdemeanor
by OED shall be deemed to have with-
drawn his or her application, and shall identified in paragraph (h)(1) of this
be required to reapply, pass the exam- section shall not be eligible to apply
ination, and otherwise satisfy all the for registration during the time of any
requirements of this section. No indi- sentence (including confinement or
vidual shall be certified for registra- commitment to imprisonment), de-
tion or recognition by the OED Direc- ferred adjudication, and period of pro-
tor until, to the satisfaction of the bation or parole as a result of the con-
OED Director, the individual dem- viction, and for a period of two years
onstrates his or her possession of good after the date of completion of the sen-
moral character and reputation. tence, deferred adjudication, and pe-
(ii) The OED Director, in considering riod of probation or parole, whichever
an application for registration by an is later.
attorney, may accept a State bar’s (ii) The following presumptions apply
character determination as meeting to the determination of good moral
the requirements set forth in para- character and reputation of an indi-
graph (g) of this section if, after re- vidual convicted of said felony or mis-
view, the Office finds no substantial demeanor:
discrepancy between the information (A) The court record or docket entry
provided with his or her application for
of conviction is conclusive evidence of
registration and the State bar applica-
guilt in the absence of a pardon or a
tion and moral character determina-
tion, provided that acceptance is not satisfactory showing of reform or reha-
inconsistent with other rules and the bilitation; and
requirements of 35 U.S.C. 2(b)(2)(D). (B) An individual convicted of a fel-
(h) Good moral character and reputa- ony or any misdemeanor identified in
tion. Evidence showing lack of good paragraph (h)(1) of this section is con-
moral character and reputation may clusively deemed not to have good
include, but is not limited to, convic- moral character and reputation, and
tion of a felony or a misdemeanor iden- shall not be eligible to apply for reg-
tified in paragraph (h)(1) of this sec- istration for a period of two years after
tion, drug or alcohol abuse; lack of completion of the sentence, deferred
candor; suspension or disbarment on adjudication, and period of probation
ethical grounds from a State bar; and or parole, whichever is later.
resignation from a State bar while (iii) The individual, upon applying
under investigation. for registration, shall provide satisfac-
(1) Conviction of felony or misdemeanor. tory evidence that he or she is of good
An individual who has been convicted moral character and reputation.
of a felony or a misdemeanor involving (iv) Upon proof that a conviction has
moral turpitude, breach of trust, inter- been set aside or reversed, the indi-
ference with the administration of jus-
vidual shall be eligible to file a com-
tice, false swearing, misrepresentation,
plete application for registration and
fraud, deceit, bribery, extortion, mis-
appropriation, theft, or conspiracy to the fee required by § 1.21(a)(1)(ii) of this
commit any felony or misdemeanor, is subchapter and, upon passing the reg-
presumed not to be of good moral char- istration examination, have the OED
acter and reputation in the absence of Director determine, in accordance with
397
§ 11.7 37 CFR Ch. I (7–1–16 Edition)
paragraph (h)(1) of this section, wheth- convicted in a court of a felony, or of a

er, absent the conviction, the indi- crime involving moral turpitude or
vidual possesses good moral character breach of trust, shall be ineligible to
and reputation. apply for registration until the condi-
(2) Good moral character and reputa- tions in paragraphs (h)(1) and (h)(4) of
tion involving drug or alcohol abuse. An this section are fully satisfied.
individual’s record is reviewed as a (ii) An individual who has been dis-
whole to see if there is a drug or alco- barred or suspended, or who resigned in
hol abuse issue. An individual appear- lieu of a disciplinary proceeding shall
ing to abuse drugs or alcohol may be file an application for registration and
asked to undergo an evaluation, at the the fees required by § 1.21(a)(1)(ii) and
individual’s expense, by a qualified pro- (a)(10) of this subchapter; provide a full
fessional approved by the OED Direc-
and complete copy of the proceedings
tor. In instances where, before an in-
that led to the disbarment, suspension,
vestigation commences, there is evi-
or resignation; and provide satisfactory
dence of a present abuse or an indi-
proof that he or she possesses good
vidual has not established a record of
recovery, the OED Director may re- moral character and reputation. The
quest the individual to withdraw his or following presumptions shall govern
her application, and require the indi- the determination of good moral char-
vidual to satisfactorily demonstrate acter and reputation of an individual
that he or she is complying with treat- who has been licensed to practice law
ment and undergoing recovery. or other profession in any jurisdiction
(3) Moral character and reputation in- and has been disbarred, suspended on
volving lack of candor. An individual’s ethical grounds, or allowed to resign in
lack of candor in disclosing facts bear- lieu of discipline, in that jurisdiction:
ing on or relevant to issues concerning (A) A copy of the record resulting in
good moral character and reputation disbarment, suspension or resignation
when completing the application or is prima facie evidence of the matters
any time thereafter may be found to be contained in the record, and the impo-
cause to deny registration on moral sition of disbarment or suspension, or
character and reputation grounds. the acceptance of the resignation of
(4) Moral character and reputation in- the individual shall be deemed conclu-
volving suspension, disbarment, or res- sive that the individual has committed
ignation from a profession. (i) An indi- professional misconduct.
vidual who has been disbarred or sus- (B) The individual is ineligible for
pended from practice of law or other registration and is deemed not to have
profession, or has resigned in lieu of a good moral character and reputation
disciplinary proceeding (excluded or during the period of the imposed dis-
disbarred on consent) shall be ineli- cipline.
gible to apply for registration as fol-
(iii) The only defenses available with
lows:
regard to an underlying disciplinary
(A) An individual who has been dis-
matter resulting in disbarment, sus-
barred from practice of law or other
profession, or has resigned in lieu of a pension on ethical grounds, or resigna-
disciplinary proceeding (excluded or tion in lieu of a disciplinary proceeding
disbarred on consent) shall be ineli- are set out below, and must be shown
gible to apply for registration for a pe- to the satisfaction of the OED Direc-
riod of five years from the date of dis- tor:
barment or resignation. (A) The procedure in the disciplinary
(B) An individual who has been sus- court was so lacking in notice or op-
pended on ethical grounds from the portunity to be heard as to constitute
practice of law or other profession a deprivation of due process;
shall be ineligible to apply for registra- (B) There was such infirmity of proof
tion until expiration of the period of establishing the misconduct as to give
suspension. rise to the clear conviction that the Of-
(C) An individual who was not only fice could not, consistently with its
disbarred, suspended or resigned in lieu duty, accept as final the conclusion on

of a disciplinary proceeding, but also that subject; or
398
(C) The finding of lack of good moral illness will not impede the individual’s
character and reputation by the Office ability to competently practice before
would result in grave injustice. the Office;
(i) Factors that may be taken into con- (9) Payment of the fine imposed in
sideration when evaluating rehabilitation connection with any criminal convic-
of an individual seeking a moral char- tion;
acter and reputation determination. The (10) Correction of behavior respon-
factors enumerated below are guide- sible in some degree for the mis-
lines to assist the OED Director in de- conduct;
termining whether an individual has (11) Significant and conscientious in-
demonstrated rehabilitation from an volvement in programs designed to pro-
act of misconduct or moral turpitude. vide social benefits or to ameliorate so-
The factors include: cial problems; and
(1) The nature of the act of mis- (12) Change in attitude from that
conduct, including whether it involved which existed at the time of the act of
moral turpitude, whether there were misconduct in question as evidenced by
aggravating or mitigating cir- any or all of the following:
cumstances, and whether the activity (i) Statements of the individual;
was an isolated event or part of a pat- (ii) Statements from persons familiar
tern; with the individual’s previous mis-
(2) The age and education of the indi- conduct and with subsequent attitudes
vidual at the time of the misconduct and behavioral patterns;
and the age and education of the indi- (iii) Statements from probation or
vidual at the present time; parole officers or law enforcement offi-
(3) The length of time that has passed cials as to the individual’s social ad-
between the misconduct and the justments; and
present, absent any involvement in any (iv) Statements from persons com-
further acts of moral turpitude, the petent to testify with regard to
amount of time and the extent of reha- neuropsychiatry or emotional disturb-
bilitation being dependent upon the na- ances.
ture and seriousness of the act of mis- (j) Notice to Show Cause. The OED Di-
conduct under consideration; rector shall inquire into the good
(4) Restitution by the individual to moral character and reputation of an
any person who suffered monetary individual seeking registration, pro-
losses through acts or omissions of the viding the individual with the oppor-
individual; tunity to create a record on which a
(5) Expungement of a conviction; decision is made. If, following inquiry
(6) Successful completion or early and consideration of the record, the
discharge from probation or parole; OED Director is of the opinion that the
(7) Abstinence from the use of con- individual seeking registration has not
trolled substances or alcohol for not satisfactorily established that he or
less than two years if the specific mis- she possesses good moral character and
conduct was attributable in part to the reputation, the OED Director shall
use of a controlled substance or alco- issue to the individual a notice to show
hol, where abstinence may be dem- cause why the individual’s application
onstrated by, but is not necessarily for registration should not be denied.
limited to, enrolling in and complying (1) The individual shall be given no
with a self-help or professional treat- less than ten days from the date of the
ment program; notice to reply. The notice shall be
(8) If the specific misconduct was at- given by certified mail at the address
tributable in part to a medically recog- appearing on the application if the ad-
nized mental disease, disorder or ill- dress is in the United States, and by
ness, proof that the individual sought any other reasonable means if the ad-
professional assistance, and complied dress is outside the United States.
with the treatment program prescribed (2) Following receipt of the individ-
by the professional, and submitted let- ual’s response, or in the absence of a
ters from the treating psychiatrist/psy- response, the OED Director shall con-
chologist verifying that the medically sider the individual’s response, if any,
recognized mental disease, disorder or and the record, and determine whether,
399
§ 11.8 37 CFR Ch. I (7–1–16 Edition)
in the OED Director’s opinion, the indi- vide a certificate of good standing of
vidual has sustained his or her burden the bar of the highest court of a State
of satisfactorily demonstrating that he that is no more than six months old.
or she possesses good moral character (c) An individual who does not com-
and reputation. ply with the requirements of paragraph
(k) Reapplication for registration. An (b) of this section within the two-year
individual who has been refused reg- period will be required to retake the
istration for lack of good moral char- registration examination.
acter or reputation may reapply for (d) [Reserved]
registration two years after the date of
the decision, unless a shorter period is [69 FR 35452, June 24, 2004, as amended at 73
otherwise ordered by the USPTO Direc- FR 67757, Nov. 17, 2008; 78 FR 20198, Apr. 3,
tor. An individual, who has been noti- 2013]
fied that he or she is under investiga-
tion for good moral character and rep- § 11.9 Limited recognition in patent
utation may elect to withdraw his or matters.
her application for registration, and (a) Any individual not registered
may reapply for registration two years under § 11.6 may, upon a showing of cir-
after the date of withdrawal. Upon re- cumstances which render it necessary
application for registration, the indi- or justifiable, and that the individual
vidual shall pay the fees required by is of good moral character and reputa-
§ 1.21(a)(1)(ii) and (a)(10) of this sub- tion, be given limited recognition by
chapter, and has the burden of showing the OED Director to prosecute as at-
to the satisfaction of the OED Director torney or agent a specified patent ap-
his or her possession of good moral plication or specified patent applica-
character and reputation as prescribed tions. Limited recognition under this
in paragraph (b) of this section. Upon paragraph shall not extend further
reapplication for registration, the indi- than the application or applications
vidual also shall complete successfully specified. Limited recognition shall not
the examination prescribed in para- be granted while individuals who have
graph (b) of this section, even though passed the examination or for whom
the individual has previously passed a the examination has been waived are
registration examination. awaiting registration to practice before
§ 11.8 Oath and registration fee. the Office in patent matters.
(b) A nonimmigrant alien residing in
(a) After an individual passes the ex- the United States and fulfilling the
amination, or the examination is provisions of § 11.7(a) and (b) may be
waived, the OED Director shall
granted limited recognition if the non-
promptly publish a solicitation for in-
immigrant alien is authorized by the
formation concerning the individual’s
United States Government to be em-
good moral character and reputation.
ployed or trained in the United States
The solicitation shall include the indi-
in the capacity of representing a pat-
vidual’s name, and business or commu-
nication postal address. ent applicant by presenting or pros-
(b) An individual shall not be reg- ecuting a patent application. Limited
istered as an attorney under § 11.6(a), recognition shall be granted for a pe-
registered as an agent under § 11.6(b) or riod consistent with the terms of au-
(c), or granted limited recognition thorized employment or training. Lim-
under § 11.9(b) unless within two years ited recognition shall not be granted or
of the mailing date of a notice of pass- extended to a non-United States citizen
ing registration examination or of residing abroad. If granted, limited rec-
waiver of the examination the indi- ognition shall automatically expire
vidual files with the OED Director a upon the nonimmigrant alien’s depar-
completed Data Sheet, an oath or dec- ture from the United States.
laration prescribed by the USPTO Di- (c) An individual not registered under
rector, and the registration fee set § 11.6 may, if appointed by an applicant,
forth in § 1.21(a)(2) of this subchapter. prosecute an international patent ap-
An individual seeking registration as plication only before the United States

an attorney under § 11.6(a) must pro- International Searching Authority and
400
the United States International Pre- (i) Represent and representation mean
liminary Examining Authority, pro- acting as patent attorney or patent
vided that the individual has the right agent or other representative in any
to practice before the national office appearance before the Office, or com-
with which the international applica- municating with an employee of the
tion is filed as provided in PCT Art. 49, Office with intent to influence.
Rule 90 and § 1.455 of this subchapter, or (ii) Assist in any manner means aid or
before the International Bureau when help another person on a particular
the USPTO is acting as Receiving Of- patent or patent application involving
fice pursuant to PCT Rules 83.1 bis and representation.
90.1. (iii) Particular patent or patent ap-
[69 FR 35452, June 24, 2004, as amended at 78 plication means any patent or patent
FR 20198, Apr. 3, 2013] application, including, but not limited
to, a provisional, substitute, inter-
§ 11.10 Restrictions on practice in pat- national, international design, con-
ent matters. tinuation, divisional, continuation-in-
(a) Only practitioners who are reg- part, or reissue patent application, as
istered under § 11.6 or individuals given well as any protest, reexamination, pe-
limited recognition under § 11.9(a) or tition, appeal, interference, or trial
(b) are permitted to prosecute patent proceeding based on the patent or pat-
applications of others before the Office; ent application.
or represent others in any proceedings (iv) Participate personally and substan-
before the Office. tially. (A) Basic requirements. The re-
(b) Post employment agreement of strictions of § 11.10(a)(1) apply only to
former Office employee. No individual those patents and patent applications
who has served in the patent exam- in which a former Office employee had
ining corps or elsewhere in the Office ‘‘personal and substantial participa-
may practice before the Office after tion,’’ exercised ‘‘through decision, ap-
termination of his or her service, un- proval, disapproval, recommendation,
less he or she signs a written under- the rendering of advice, investigation
taking agreeing: or otherwise.’’ To participate personally
(1) To not knowingly act as agent or means directly, and includes the par-
attorney for, or otherwise represent, or ticipation of a subordinate when actu-
assist in any manner the representa- ally directed by the former Office em-
tion of, any other person: ployee in the patent or patent applica-
(i) Before the Office, tion. Substantially means that the em-
(ii) In connection with any particular ployee’s involvement must be of sig-
patent or patent application, nificance to the matter, or form a basis
(iii) In which said employee partici- for a reasonable appearance of such sig-
pated personally and substantially as nificance. It requires more than official
an employee of the Office; and responsibility, knowledge, perfunctory
(2) To not knowingly act within two involvement, or involvement on an ad-
years after terminating employment ministrative or peripheral issue. A
by the Office as agent or attorney for, finding of substantiality should be
or otherwise represent, or assist in any based not only on the effort devoted to
manner the representation of any other a patent or patent application, but also
person: on the importance of the effort. While
(i) Before the Office, a series of peripheral involvements
(ii) In connection with any particular may be insubstantial, the single act of
patent or patent application, approving or participation in a critical
(iii) If such patent or patent applica- step may be substantial. It is essential
tion was pending under the employee’s that the participation be related to a
official responsibility as an officer or ‘‘particular patent or patent applica-
employee within a period of one year tion.’’ (See paragraph (b)(3)(iii) of this
prior to the termination of such re- section.)
sponsibility. (B) Participation on ancillary mat-
(3) The words and phrases in para- ters. An Office employee’s participa-
graphs (b)(1) and (b)(2) of this section tion on subjects not directly involving
are construed as follows: the substantive merits of a patent or
401
§ 11.10 37 CFR Ch. I (7–1–16 Edition)
patent application may not be ‘‘sub- budgeting procedures, public or com-

stantial,’’ even if it is time-consuming. munity relations aspects, or equal em-
An employee whose official responsi- ployment opportunity considerations.
bility is the review of a patent or pat- Responsibility for such an ancillary
ent application solely for compliance consideration does not constitute offi-
with administrative control or budg- cial responsibility for the particular
etary considerations and who reviews a patent or patent application, except
particular patent or patent application when such a consideration is also the
for such a purpose should not be re- subject of the employee’s proposed rep-
garded as having participated substan- resentation.
tially in the patent or patent applica- (C) Duty to inquire. In order for a
tion, except when such considerations former employee, e.g., former patent
also are the subject of the employee’s examiner, to be barred from rep-
proposed representation. resenting or assisting in representing
(C) Role of official responsibility in another as to a particular patent or
determining substantial participation. patent application, he or she need not
Official responsibility is defined in para- have known, while employed by the Of-
graph (b)(3)(v) of this section. ‘‘Per- fice, that the patent or patent applica-
sonal and substantial participation’’ is tion was pending under his or her offi-
different from ‘‘official responsibility.’’ cial responsibility. The former em-
One’s responsibility may, however, ployee has a reasonable duty of inquiry
play a role in determining the ‘‘sub- to learn whether the patent or patent
stantiality’’ of an Office employee’s application had been under his or her
participation. official responsibility. Ordinarily, a
(v) Official responsibility means the di- former employee who is asked to rep-
rect administrative or operating au- resent another on a patent or patent
thority, whether intermediate or final, application will become aware of facts
and either exercisable alone or with sufficient to suggest the relationship of
others, and either personally or the prior matter to his or her former
through subordinates, to approve, dis- office, e.g., technology center, group or
approve, or otherwise direct Govern- art unit. If so, he or she is under a duty
ment actions. to make further inquiry. It would be
(A) Determining official responsi- prudent for an employee to maintain a
bility. Ordinarily, those areas assigned record of only patent application num-
by statute, regulation, Executive bers of the applications actually acted
Order, job description, or delegation of upon by decision or recommendation,
authority determine the scope of an as well as those applications under the
employee’s ‘‘official responsibility’’. employee’s official responsibility
All particular matters under consider- which he or she has not acted upon.
ation in the Office are under the ‘‘offi- (D) Self-disqualification. A former
cial responsibility’’ of the Director of employee, e.g., former patent exam-
the Office, and each is under that of iner, cannot avoid the restrictions of
any intermediate supervisor having re- this section through self-disqualifica-
sponsibility for an employee who actu- tion with respect to a patent or patent
ally participates in the patent or pat- application for which he or she other-
ent application within the scope of his wise had official responsibility. How-
or her duties. A patent examiner would ever, an employee who through self-dis-
have ‘‘official responsibility’’ for the qualification does not participate per-
patent applications assigned to him or sonally and substantially in a par-
her. ticular patent or patent application is
(B) Ancillary matters and official re- not subject to the lifetime restriction
sponsibility. Administrative authority of paragraph (b)(1) of this section.
as used in paragraph (v) of this section (vi) Pending means that the matter
means authority for planning, orga- was in fact referred to or under consid-
nizing and controlling a patent or pat- eration by persons within the employ-
ent application rather than authority ee’s area of official responsibility.
to review or make decisions on ancil- (4) Measurement of the two-year re-
lary aspects of a patent or patent ap- striction period. The two-year period
plication such as the regularity of under paragraph (b)(2) of this section is
402
measured from the date when the em- standing with the bar of the highest
ployee’s official responsibility in a par- court of one or more States shall pro-
ticular area ends, not from the termi- vide the OED Director with the State
nation of service in the Office, unless bar identification number associated
the two occur simultaneously. The pro- with each membership. The OED Direc-
hibition applies to all particular pat- tor shall publish from the roster a list
ents or patent applications subject to containing the name, postal business
such official responsibility in the one- addresses, business telephone number,
year period before termination of such registration number, and registration
responsibility. status as an attorney or agent of each
(c) Former employees of the Office. This registered practitioner recognized to
section imposes restrictions generally practice before the Office in patent
parallel to those imposed in 18 U.S.C. cases.
207(a) and (b)(1). This section, however, (2) A letter may be addressed to any
does not interpret these statutory pro- registered practitioner, at the address
visions or any other post-employment of which separate notice was last re-
restrictions that may apply to former ceived by the OED Director, for the
Office employees, and such former em- purpose of ascertaining whether such
ployees should not assume that con- practitioner desires to remain on the
duct not prohibited by this section is register. Any registered practitioner
otherwise permissible. Former employ- failing to reply and give any informa-
ees of the Office, whether or not they tion requested by the OED Director
are practitioners, are encouraged to within a time limit specified will be
contact the Department of Commerce subject to administrative suspension
for information concerning applicable under paragraph (b) of this section.
post-employment restrictions. (b) Administrative suspension. (1)
(d) An employee of the Office may Whenever it appears that a registered
not prosecute or aid in any manner in practitioner or a person granted lim-
the prosecution of any patent applica- ited recognition under § 11.9(b) has
tion before the Office. failed to comply with § 11.8(d) or para-
(e) Practice before the Office by Gov- graph (a)(2) of this section, the OED Di-
ernment employees is subject to any rector shall publish and send a notice
applicable conflict of interest laws, to the registered practitioner or person
regulations or codes of professional re- granted limited recognition advising of
sponsibility. the noncompliance, the consequence of
[69 FR 35452, June 24, 2004, as amended at 77 being administratively suspended
FR 46630, Aug. 6, 2012; 80 FR 17971, Apr. 2, under paragraph (b)(5) of this section if
2015] noncompliance is not timely remedied,
and the requirements for reinstate-
§ 11.11 Administrative suspension, in- ment under paragraph (f) of this sec-
activation, resignation, and read- tion. The notice shall be published and
mission. sent to the registered practitioner or
(a) Contact information. (1) A reg- person granted limited recognition by
istered practitioner must notify the mail to the last postal address fur-
OED Director of his or her postal ad- nished under paragraph (a) of this sec-
dress for his or her office, up to three tion or by email addressed to the last
email addresses where he or she re- email addresses furnished under para-
ceives email, and a business telephone graph (a) of this section. The notice
number, as well as every change to any shall demand compliance and payment
of said addresses or telephone number of a delinquency fee set forth in
within thirty days of the date of the § 1.21(a)(9)(i) of this subchapter within
change. A registered practitioner shall, sixty days after the date of such no-
in addition to any notice of change of tice.
address and telephone number filed in (2) In the event a registered practi-
individual patent applications, sepa- tioner or person granted limited rec-
rately file written notice of the change ognition fails to comply with the no-
of address or telephone number to the tice of paragraph (b)(1) of this section
OED Director. A registered practi- within the time allowed, the OED Di-
tioner who is an attorney in good rector shall publish and send in the
403
§ 11.11 37 CFR Ch. I (7–1–16 Edition)
manner provided for in paragraph (b)(1) the pendency of any review of the
of this section to the registered practi- USPTO Director’s final decision.
tioner or person granted limited rec- (4) [Reserved]
ognition a Rule to Show Cause why his (5) An administratively suspended
or her registration or recognition registered practitioner or person grant-
should not be administratively sus- ed limited recognition is subject to in-
pended, and he or she no longer be per- vestigation and discipline for his or her
mitted to practice before the Office in conduct prior to, during, or after the
patent matters or in any way hold him- period he or she was administratively
self or herself out as being registered suspended.
or authorized to practice before the Of- (6) An administratively suspended
fice in patent matters. The OED Direc- registered practitioner or person grant-
tor shall file a copy of the Rule to ed limited recognition is prohibited
Show Cause with the USPTO Director. from practicing before the Office in
(3) Within 30 days of the OED Direc- patent cases while administratively
tor’s sending the Rule to Show Cause suspended. A registered practitioner or
identified in paragraph (b)(2) of this person granted limited recognition who
section, the registered practitioner or knows he or she has been administra-
person granted limited recognition tively suspended under this section will
may file a response to the Rule to be subject to discipline for failing to
Show Cause with the USPTO Director. comply with the provisions of this
The response must set forth the factual paragraph (b).
and legal bases why the person should (c) Administrative inactivation. (1) Any
not be administratively suspended. The registered practitioner who shall be-
registered practitioner or person grant- come employed by the Office shall
ed limited recognition shall serve the comply with § 11.116 for withdrawal
OED Director with a copy of the re- from the applications, patents, and
sponse at the time it is filed with the trademark matters wherein he or she
USPTO Director. Within ten days of re- represents an applicant or other per-
ceiving a copy of the response, the OED son, and notify the OED Director in
Director may file a reply with the writing of said employment on the first
USPTO Director that includes docu- day of said employment. The name of
ments demonstrating that the notice any registered practitioner employed
identified in paragraph (b)(1) of this by the Office shall be endorsed on the
section was published and sent to the roster as administratively inactive.
practitioner in accordance with para- Upon separation from the Office, the
graph (b)(1) of this section. A copy of administratively inactive practitioner
the reply by the OED Director shall be may request reactivation by com-
served on the registered practitioner or pleting and filing an application, Data
person granted limited recognition. Sheet, signing a written undertaking
When acting on the Rule to Show required by § 11.10, and paying the fee
Cause, if the USPTO Director deter- set forth in § 1.21(a)(1)(i) of this sub-
mines that there are no genuine issues chapter. An administratively inactive
of material fact regarding the Office’s practitioner remains subject to the
compliance with the notice require- provisions of the USPTO Rules of Pro-
ments under this section or the failure fessional Conduct and to proceedings
of the person to pay the requisite fees, and sanctions under §§ 11.19 through
the USPTO Director shall enter an 11.58 for conduct that violates a provi-
order administratively suspending the sion of the USPTO Rules of Profes-
registered practitioner or person grant- sional Conduct prior to or during em-
ed limited recognition. Otherwise, the ployment at the Office. If, within 30
USPTO Director shall enter an appro- days after separation from the Office,
priate order dismissing the Rule to the registered practitioner does not re-
Show Cause. Nothing herein shall per- quest active status or another status,
mit an administratively suspended reg- the registered practitioner will be en-
istered practitioner or person granted dorsed on the roster as voluntarily in-
limited recognition to seek a stay of active and be subject to the provisions

the administrative suspension during of paragraph (d) of this section.
404
(2) Any registered practitioner who is rector furnishing all requested infor-
a judge of a court of record, full-time mation and material, including infor-
court commissioner, U.S. bankruptcy mation and material pertaining to the
judge, U.S. magistrate judge, or a re- practitioner’s moral character and rep-
tired judge who is eligible for tem- utation under § 11.7(a)(2)(i) during the
porary judicial assignment and is not period of inactivation, a declaration or
engaged in the practice of law may re- affidavit attesting to the fact that the
quest, in writing, that his or her name practitioner has read the most recent
be endorsed on the roster as adminis- revisions of the patent laws and the
tratively inactive. Upon acceptance of rules of practice before the Office, and
the request, the OED Director shall en- pays the fees set forth in § 1.21(a)(7)(iii)
dorse the name of the practitioner as and (iv) of this subchapter.
administratively inactive. Following (e) Resignation. A registered practi-
separation from the bench, the practitioner or a practitioner recognized
tioner may request restoration to ac- under § 11.14(c), who is not under inves-
tive status by completing and filing an tigation under § 11.22 for a possible vio-
application, Data Sheet, and signing a lation of the USPTO Rules of Profes-
written undertaking required by § 11.10. sional Conduct, subject to discipline
(d) Voluntary inactivation. (1) Except under §§ 11.24 or 11.25, or a practitioner
as provided in paragraph (d)(4) of this against whom probable cause has been
section, any registered practitioner found by a panel of the Committee on
may voluntarily enter inactive status Discipline under § 11.23(b), may resign
by filing a request, in writing, that his by notifying the OED Director in writ-
or her name be endorsed on the roster ing that he or she desires to resign.
as voluntarily inactive. Upon accept- Upon acceptance in writing by the OED
ance of the request, the OED Director Director of such notice, that registered
shall endorse the name as voluntarily practitioner or practitioner under
inactive. § 11.14 shall no longer be eligible to
(2) [Reserved] practice before the Office in patent
(3) A registered practitioner who matters but shall continue to file a
seeks or enters into voluntary inactive change of address for five years there-
status is subject to investigation and after in order that he or she may be lo-
discipline for his or her conduct prior cated in the event information regard-
to, during, or after the period of his or ing the practitioner’s conduct comes to
her inactivation. the attention of the OED Director or
(4) [Reserved] any grievance is made about his or her
(5) A registered practitioner in vol- conduct while he or she engaged in
untary inactive status is prohibited practice before the Office. The name of
from practicing before the Office in any registered practitioner whose res-
patent cases while in voluntary inac- ignation is accepted shall be removed
tive status. A registered practitioner in from the register, endorsed as resigned,
voluntary inactive status will be sub- and notice thereof published in the Of-
ject to discipline for failing to comply ficial Gazette. Upon acceptance of the
with the provisions of this paragraph. resignation by the OED Director, the
Upon acceptance of the request for vol- registered practitioner must comply
untary inactive status, the practi- with the provisions of § 11.116.
tioner must comply with the provisions (f) Administrative reinstatement. (1)
of § 11.116. Any registered practitioner who has
(6) Any registered practitioner whose been administratively suspended pursu-
name has been endorsed as voluntarily ant to paragraph (b) of this section, or
inactive pursuant to paragraph (d)(1) of who has resigned pursuant to para-
this section and is not under investiga- graph (e) of this section, may be rein-
tion and not subject to a disciplinary stated on the register provided the
proceeding may be restored to active practitioner has applied for reinstate-
status on the register as may be appro- ment on an application form supplied
priate provided that the practitioner by the OED Director, demonstrated
files a written request for restoration, compliance with the provisions of
a completed application for registra- § 11.7(a)(2)(i) and (iii), and paid the fees
tion on a form supplied by the OED Di- set forth in § 1.21(a)(9)(i) and (a)(9)(ii) of
405
§§ 11.12–11.13 37 CFR Ch. I (7–1–16 Edition)
this subchapter. Any person granted apply for registration or recognition to

limited recognition who has been ad- practice before the Office in trademark
ministratively suspended pursuant to and other non-patent matters. Reg-
paragraph (b) of this section may have istration as a patent practitioner does
their recognition reactivated provided not itself entitle an individual to prac-
the practitioner has applied for rein- tice before the Office in trademark
statement on an application form sup- matters.
plied by the OED Director, dem- (b) Non-lawyers. Individuals who are
onstrated compliance with the provi- not attorneys are not recognized to
sions of § 11.7(a)(2)(i) and (iii), and paid practice before the Office in trademark
the fees set forth in § 1.21(a)(9)(i) and and other non-patent matters, except
(a)(9)(ii) of this subchapter. A practi- that individuals not attorneys who
tioner who has resigned or was admin- were recognized to practice before the
istratively suspended for two or more Office in trademark matters under this
years before the date the Office re- chapter prior to January 1, 1957, will be
ceives a completed application from recognized as agents to continue prac-
the person who resigned or was admin- tice before the Office in trademark
istratively suspended must also pass matters. Except as provided in the pre-
the registration examination under ceding sentence, registration as a pat-
§ 11.7(b)(1)(ii). Any reinstated practi- ent agent does not itself entitle an in-
tioner is subject to investigation and dividual to practice before the Office in
discipline for his or her conduct that trademark matters.
occurred prior to, during, or after the (c) Foreigners. Any foreign attorney
period of his or her administrative sus- or agent not a resident of the United
pension or resignation. States who shall file a written applica-
(2) Any registered practitioner whose tion for reciprocal recognition under
registration has been administratively paragraph (f) of this section and prove
inactivated pursuant to paragraph (c) to the satisfaction of the OED Director
of this section may be reinstated to the that he or she is registered or in good
register as may be appropriate pro- standing before the patent or trade-
vided within two years after his or her mark office of the country in which he
employment with the Office ceases or or she resides and practices and is pos-
within two years after his or her em- sessed of good moral character and rep-
ployment in a judicial capacity ceases utation, may be recognized for the lim-
the following is filed with the OED Di- ited purpose of representing parties lo-
rector: a request for reinstatement, a cated in such country before the Office
completed application for registration in the presentation and prosecution of
on a form supplied by the OED Director trademark matters, provided: the pat-
furnishing all requested information ent or trademark office of such country
and material, and the fee set forth in allows substantially reciprocal privi-
§ 1.21(a)(9)(ii) of this subchapter. Any leges to those permitted to practice in
registered practitioner inactivated or trademark matters before the Office.
reinstated is subject to investigation Recognition under this paragraph shall
and discipline for his or her conduct be- continue only during the period that
fore, during, or after the period of his the conditions specified in this para-
or her inactivation. graph obtain.
(d) Recognition of any individual
FR 20198, Apr. 3, 2013] under this section shall not be con-
strued as sanctioning or authorizing
§§ 11.12–11.13 [Reserved] the performance of any act regarded in
the jurisdiction where performed as the
§ 11.14 Individuals who may practice unauthorized practice of law.
before the Office in trademark and (e) No individual other than those
other non-patent matters. specified in paragraphs (a), (b), and (c)
(a) Attorneys. Any individual who is of this section will be permitted to
an attorney as defined in § 11.1 may practice before the Office in trademark
represent others before the Office in matters on behalf of a client. Any indi-
trademark and other non-patent mat- vidual may appear in a trademark or

ters. An attorney is not required to other non-patent matter in his or her
406
own behalf. Any individual may appear admission to the USPTO Law School
in a trademark matter for: Clinic Certification Program, and par-
(1) A firm of which he or she is a ticipating law schools seeking to add a
member, practice area, shall submit an applica-
(2) A partnership of which he or she tion for admission for such practice
is a partner, or area to OED in accordance with cri-
(3) A corporation or association of teria and time periods set forth by the
which he or she is an officer and which OED Director.
he or she is authorized to represent, if (2) Renewal application. Each partici-
such firm, partnership, corporation, or pating law school desiring to continue
association is a party to a trademark in the USPTO Law School Clinic Cer-
proceeding pending before the Office. tification Program shall, biennially
(f) Application for reciprocal recogni- from a date assigned to the law school
tion. An individual seeking reciprocal by the OED Director, submit a renewal
recognition under paragraph (c) of this application to OED in accordance with
section, in addition to providing evi- criteria set forth by the OED Director.
dence satisfying the provisions of para- (3) The OED Director may refuse ad-
graph (c) of this section, shall apply in mission or renewal of a law school to
writing to the OED Director for recip- the USPTO Law School Clinic Certifi-
rocal recognition, and shall pay the ap- cation Program if the OED Director de-
plication fee required by § 1.21(a)(1)(i) of termines that admission, or renewal, of
this subchapter. the law school would fail to provide
significant benefit to the public or the
[73 FR 47688, Aug. 14, 2008]
law students participating in the law
§ 11.15 Refusal to recognize a practi- school’s clinic.
tioner. (c) Faculty Clinic Supervisor. Any law
school seeking admission to or partici-
Any practitioner authorized to ap- pating in the USPTO Law School Clin-
pear before the Office may be sus- ic Certification Program must have at
pended, excluded, or reprimanded in ac- least one Faculty Clinic Supervisor for
cordance with the provisions of this the patent practice area, if the clinic
Part. Any practitioner who is sus- includes patent practice; and at least
pended or excluded under this Part one Faculty Clinic Supervisor for the
shall not be entitled to practice before trademark practice area, if the clinic
the Office in patent, trademark, or includes trademark practice.
other non-patent matters while sus- (1) Patent Faculty Clinic Supervisor. A
pended or excluded. Faculty Clinic Supervisor for a law
[73 FR 47688, Aug. 14, 2008] school clinic’s patent practice must:
(i) Be a registered patent practitioner
§ 11.16 Requirements for admission to in active status and good standing with
the USPTO Law School Clinic Cer- OED;
tification Program. (ii) Demonstrate at least 3 years ex-
(a) The USPTO Law School Clinic perience in prosecuting patent applica-
Certification Program allows students tions before the Office within the 5
enrolled in a participating law school’s years immediately prior to the request
clinic to practice before the Office in for approval as a Faculty Clinic Super-
patent or trademark matters by draft- visor;
ing, filing, and prosecuting patent or (iii) Assume full responsibility for
trademark applications on a pro bono the instruction and guidance of law
basis for clients that qualify for assist- students participating in the law
ance from the law school’s clinic. All school clinic’s patent practice;
law schools accredited by the American (iv) Assume full responsibility for all
Bar Association are eligible for partici- patent applications and legal services,
pation in the program, and shall be ex- including filings with the Office, pro-
amined for acceptance using identical duced by the clinic; and
criteria. (v) Comply with all additional cri-
(b) Application for admission and re- teria established by the OED Director.
newal—(1) Application for admission. (2) Trademark Faculty Clinic Super-

Non-participating law schools seeking visor. A Faculty Clinic Supervisor for a
407
§ 11.16 37 CFR Ch. I (7–1–16 Edition)
law school clinic’s trademark practice to practice before the Office in patent
must: or trademark matters, or both, to law
(i) Be an attorney as defined in § 11.1; school students enrolled in a clinic of a
(ii) Demonstrate at least 3 years ex- law school that is participating in the
perience in prosecuting trademark ap- USPTO Law School Clinic Certifi-
plications before the Office within the cation Program upon submission and
5 years immediately prior to the date approval of an application by a law stu-
of the request for approval as a Faculty dent to OED in accordance with cri-
Clinic Supervisor; teria established by the OED Director.
(iii) Assume full responsibility for (2) In order to be granted limited rec-
the instruction, guidance, and super- ognition to practice before the Office
vision of law students participating in in patent matters under the USPTO
the law school clinic’s trademark prac- Law School Clinic Certification Pro-
tice; gram, a law student must:
(iv) Assume full responsibility for all (i) Be enrolled in a law school that is
trademark applications and legal serv- an active participant in the USPTO
ices, including filings with the Office, Law School Clinic Certification Pro-
produced by the clinic; and gram;
(v) Comply with all additional cri- (ii) Be enrolled in the patent practice
teria established by the OED Director. area of a clinic of the participating law
(3) A Faculty Clinic Supervisor under school;
paragraph (c) of this section must sub- (iii) Have successfully completed at
mit a statement: least one year of law school or the
(i) Assuming responsibility for per- equivalent;
forming conflicts checks for each law (iv) Have read the USPTO Rules of
student and client in the relevant clin- Professional Conduct and the relevant
ic practice area; rules of practice and procedure for pat-
(ii) Assuming responsibility for stu- ent matters;
dent instruction and work, including
(v) Be supervised by an approved Fac-
instructing, mentoring, overseeing, and
ulty Clinic Supervisor pursuant to
supervising all participating law school
paragraph (c)(1) of this section;
students in the clinic’s relevant prac-
tice area; (vi) Be certified by the dean of the
(iii) Assuming responsibility for con- participating law school, or one au-
tent and timeliness of all applications thorized to act for the dean, as: Having
and documents submitted to the Office completed the first year of law school
through the relevant practice area of or the equivalent, being in compliance
the clinic; with the law school’s ethics code, and
(iv) Assuming responsibility for all being of good moral character and rep-
communications by clinic students to utation;
clinic clients in the relevant clinic (vii) Neither ask for nor receive any
practice area; fee or compensation of any kind for
(v) Assuming responsibility for en- legal services from a clinic client on
suring that there is no gap in represen- whose behalf service is rendered;
tation of clinic clients in the relevant (viii) Have proved to the satisfaction
practice area during student turnover, of the OED Director that he or she pos-
school schedule variations, inter-se- sesses the scientific and technical
mester transitions, or other disrup- qualifications necessary for him or her
tions; to render patent applicants valuable
(vi) Attesting to meeting the criteria service; and
of paragraph (c)(1) or (2) of this section (ix) Comply with all additional cri-
based on relevant practice area of the teria established by the OED Director.
clinic; and (3) In order to be granted limited rec-
(vii) Attesting to all other criteria as ognition to practice before the Office
established by the OED Director. in trademark matters under the
(d) Limited recognition for law students USPTO Law School Clinic Certifi-
participating in the USPTO Law School cation Program, a law student must:
Clinic Certification Program. (1) The OED (i) Be enrolled in a law school that is
Director may grant limited recognition an active participant in the USPTO
408
Law School Clinic Certification Pro- (2) The number of faculty partici-
gram; pating in each of the patent and trade-
(ii) Be enrolled in the trademark mark practice areas of the school’s
practice area of a clinic of the partici- clinic;
pating law school; (3) The number of persons to whom
(iii) Have successfully completed at the school’s clinic provided assistance
least one year of law school or the in any given patent or trademark mat-
equivalent; ter but with whom no practitioner-cli-
(iv) Have read the USPTO Rules of ent relationship had formed;
Professional Conduct and the relevant (4) The number of client representa-
USPTO rules of practice and procedure
tions undertaken for each of the patent
for trademark matters;
and trademark practice areas of the
(v) Be supervised by an approved Fac-
school’s clinic;
ulty Clinic Supervisor pursuant to
paragraph (c)(2) of this section; (5) The identity and number of appli-
(vi) Be certified by the dean of the cations and responses filed in each of
participating law school, or one au- the patent and/or trademark practice
thorized to act for the dean, as: Having areas of the school’s clinic;
completed the first year of law school (6) The number of patents issued, or
or the equivalent, being in compliance trademarks registered, to clients of the
with the law school’s ethics code, and clinic; and
being of good moral character and rep- (7) All other information specified by
utation; the OED Director.
(vii) Neither ask for nor receive any (c) Inactivation of law schools partici-
fee or compensation of any kind for pating in the USPTO Law School Certifi-
legal services from a clinic client on cation Program. (1) The OED Director
whose behalf service is rendered; and may inactivate a patent and/or trade-
(viii) Comply with all additional cri- mark practice area of a participating
teria established by the OED Director. law school:
(4) Students registered to practice be- (i) If the participating law school
fore the Office in patent matters as a does not have an approved Faculty
patent agent, or authorized to practice Clinic Supervisor for the relevant prac-
before the Office in trademark matters tice area, as described in § 11.16(c);
under § 11.14, must complete and sub-
(ii) If the participating law school
mit a student application pursuant to
does not meet each of the requirements
paragraph (d)(1) of this section and
and criteria for participation in the
meet the criteria of paragraph (d)(2) or
USPTO Law School Clinic Certifi-
(3) of this section, as applicable, in
cation Program as set forth in § 11.16,
order to participate in the program.
this section, or as otherwise estab-
[81 FR 33596, May 27, 2016] lished by the OED Director; or
(iii) For other good cause as deter-
§ 11.17 Requirements for participation
in the USPTO Law School Clinic mined by the OED Director.
Certification Program. (2) In the event that a practice area
of a participating school is inactivated,
(a) Each law school participating in
the USPTO Law School Clinic Certifi- the participating law school students
cation Program must provide its pat- must:
ent and/or trademark services on a pro (i) Immediately cease all student
bono basis. practice before the Office in the rel-
(b) Each law school participating in evant practice area and notify each cli-
the USPTO Law School Clinic Certifi- ent of such; and
cation Program shall, on a semi-annual (ii) Disassociate themselves from all
basis, provide OED with a report re- client matters relating to practice be-
garding its clinic activity during the fore the Office in the relevant practice
reporting period, which shall include: area, including complying with Office
(1) The number of law students par- and State rules for withdrawal from
ticipating in each of the patent and representation.
trademark practice areas of the (3) A patent or trademark practice

school’s clinic; area of a law school clinic that has
409
§ 11.18 37 CFR Ch. I (7–1–16 Edition)
been inactivated may be restored to ac- paper, the party presenting such paper,
tive status, upon application to and ap- whether a practitioner or non-practi-
proval by the OED Director. tioner, is certifying that—
(d) Removal of law schools participating (1) All statements made therein of
in the USPTO Law School Clinic Certifi- the party’s own knowledge are true, all
cation Program. (1) The OED Director statements made therein on informa-
may remove a patent and/or trademark tion and belief are believed to be true,
practice area of the clinic of a law and all statements made therein are
school participating in the USPTO Law made with the knowledge that who-
School Clinic Certification Program: ever, in any matter within the jurisdic-
(i) Upon request from the law school; tion of the Office, knowingly and will-
(ii) If the participating law school fully falsifies, conceals, or covers up by
does not meet each of the requirements any trick, scheme, or device a material
and criteria for participation in the fact, or knowingly and willfully makes
USPTO Law School Clinic Certifi- any false, fictitious, or fraudulent
cation Program as set forth in § 11.16, statements or representations, or
this section, or as otherwise estab-
knowingly and willfully makes or uses
lished by the OED Director; or
any false writing or document knowing
(iii) For other good cause as deter-
the same to contain any false, ficti-
mined by the OED Director.
(2) In the event that a practice area tious, or fraudulent statement or
of a participating school is removed by entry, shall be subject to the penalties
the OED Director, the participating set forth under 18 U.S.C. 1001 and any
law school students must: other applicable criminal statute, and
(i) Immediately cease all student violations of the provisions of this sec-
practice before the Office in the rel- tion may jeopardize the probative
evant practice area and notify each cli- value of the paper; and
ent of such; and (2) To the best of the party’s knowl-
(ii) Disassociate themselves from all edge, information and belief, formed
client matters relating to practice be- after an inquiry reasonable under the
fore the Office in the relevant practice circumstances,
area, including complying with Office (i) The paper is not being presented
and State rules for withdrawal from for any improper purpose, such as to
representation. harass someone or to cause unneces-
(3) A school that has been removed sary delay or needless increase in the
from participation in the USPTO Law cost of any proceeding before the Of-
School Clinic Certification Program fice;
under this section may reapply to the (ii) The other legal contentions
program in compliance with § 11.16. therein are warranted by existing law
[81 FR 33597, May 27, 2016] or by a nonfrivolous argument for the
extension, modification, or reversal of
§ 11.18 Signature and certificate for existing law or the establishment of
correspondence filed in the Office. new law;
(a) For all documents filed in the Of- (iii) The allegations and other fac-
fice in patent, trademark, and other tual contentions have evidentiary sup-
non-patent matters, and all documents port or, if specifically so identified, are
filed with a hearing officer in a dis- likely to have evidentiary support
ciplinary proceeding, except for cor- after a reasonable opportunity for fur-
respondence that is required to be ther investigation or discovery; and
signed by the applicant or party, each (iv) The denials of factual conten-
piece of correspondence filed by a prac- tions are warranted on the evidence, or
titioner in the Office must bear a sig- if specifically so identified, are reason-
nature, personally signed or inserted ably based on a lack of information or
by such practitioner, in compliance belief.
with § 1.4(d) or § 2.193(a) of this chapter. (c) Violations of any of paragraphs
(b) By presenting to the Office or (b)(2)(i) through (iv) of this section are,
hearing officer in a disciplinary pro- after notice and reasonable oppor-
ceeding (whether by signing, filing, tunity to respond, subject to such sanc-

submitting, or later advocating) any tions or actions as deemed appropriate
410
by the USPTO Director, which may in- (b) Grounds for discipline; Grounds for
clude, but are not limited to, any com- transfer to disability inactive status. The
bination of— following, whether done individually
(1) Striking the offending paper; by a practitioner or in concert with
(2) Referring a practitioner’s conduct any other person or persons and wheth-
to the Director of Enrollment and Dis- er or not done in the course of pro-
cipline for appropriate action; viding legal services to a client, or in a
(3) Precluding a party or practitioner matter pending before the Office, con-
from submitting a paper, or presenting stitute grounds for discipline or
or contesting an issue; grounds for transfer to disability inac-
tive status.
(4) Affecting the weight given to the
(1) Grounds for discipline include:
offending paper; or
(i) Conviction of a serious crime;
(5) Terminating the proceedings in (ii) Discipline on ethical grounds im-
the Office. posed in another jurisdiction or dis-
(d) Any practitioner violating the ciplinary disqualification from partici-
provisions of this section may also be pating in or appearing before any Fed-
subject to disciplinary action. eral program or agency;
[73 FR 47689, Aug. 14, 2008, as amended at 74 (iii) Failure to comply with any order
FR 54912, Oct. 26, 2009; 78 FR 62409, Oct. 21, of a Court disciplining a practitioner,
2013] or any final decision of the USPTO Di-
rector in a disciplinary matter;
(iv) Violation of any USPTO Rule of
Subpart C—Investigations and Professional Conduct; or
Disciplinary Proceedings; Ju- (v) Violation of the oath or declara-
risdiction, Sanctions, Inves- tion taken by the practitioner. See
tigations, and Proceedings § 11.8.
(2) Grounds for transfer to disability
SOURCE: 73 FR 47689, Aug. 14, 2008, unless inactive status include:
otherwise noted. (i) Being transferred to disability in-
active status in another jurisdiction;
§ 11.19 Disciplinary jurisdiction; Juris- (ii) Being judicially declared incom-
diction to transfer to disability in- petent, being judicially ordered to be
active status. involuntarily committed after a hear-
(a) All practitioners engaged in prac- ing on the grounds of insanity, incom-
tice before the Office; all practitioners petency or disability, or being placed
administratively suspended; all practi- by court order under guardianship or
tioners registered to practice before conservatorship; or
the Office in patent cases; all practi- (iii) Filing a motion requesting a dis-
tioners inactivated; all practitioners ciplinary proceeding be held in abey-
authorized under § 11.6(d) to take testi- ance because the practitioner is suf-
mony; and all practitioners transferred fering from a disability or addiction
to disability inactive status, rep- that makes it impossible for the practi-
rimanded, suspended, or excluded from tioner to adequately defend the charges
the practice of law by a duly con- in the disciplinary proceeding.
stituted authority, including by the (c) Petitions to disqualify a practi-
USPTO Director, are subject to the dis- tioner in ex parte or inter partes matters
ciplinary jurisdiction of the Office. in the Office are not governed by
Practitioners who have resigned shall §§ 11.19 through 11.60 and will be han-
also be subject to such jurisdiction dled on a case-by-case basis under such
with respect to conduct undertaken conditions as the USPTO Director
prior to the resignation and conduct in deems appropriate.
regard to any practice before the Office (d) The OED Director may refer the
following the resignation. A person not existence of circumstances suggesting
registered or recognized to practice be- unauthorized practice of law to the au-
fore the Office is also subject to the thorities in the appropriate jurisdic-
disciplinary authority of the Office if tion(s).
the person provides or offers to provide [73 FR 47689, Aug. 14, 2008, as amended at 78
any legal services before the Office. FR 20200, Apr. 3, 2013]
411
§ 11.20 37 CFR Ch. I (7–1–16 Edition)
§ 11.20 Disciplinary sanctions; Trans- may conclude an investigation with

fer to disability inactive status. the issuance of a warning. The warning
(a) Types of discipline. The USPTO Di- shall contain a brief statement of facts
rector, after notice and opportunity for and USPTO Rules of Professional Con-
a hearing, and where grounds for dis- duct relevant to the facts.
cipline exist, may impose on a practi- [78 FR 20200, Apr. 3, 2013]
tioner the following types of discipline:
(1) Exclusion from practice before the § 11.22 Disciplinary investigations.
Office; (a) The OED Director is authorized to
(2) Suspension from practice before investigate possible grounds for dis-
the Office for an appropriate period of cipline. An investigation may be initi-
time; ated when the OED Director receives a
(3) Reprimand or censure; or grievance, information or evidence
(4) Probation. Probation may be im- from any source suggesting possible
posed in lieu of or in addition to any grounds for discipline. Neither unwill-
other disciplinary sanction. Any condi- ingness nor neglect by a grievant to
tions of probation shall be stated in prosecute a charge, nor settlement,
writing in the order imposing proba- compromise, or restitution with the
tion. The order shall also state wheth- grievant, shall in itself justify abate-
er, and to what extent, the practitioner ment of an investigation.
shall be required to notify clients of (b) Any person possessing informa-
the probation. Violation of any condition or evidence concerning possible
tion of probation shall be cause for im- grounds for discipline of a practitioner
position of the disciplinary sanction. may report the information or evidence
Imposition of the disciplinary sanction to the OED Director. The OED Director
predicated upon violation of probation may request that the report be pre-
shall occur only after an order to show sented in the form of an affidavit or
cause why the disciplinary sanction declaration.
should not be imposed is resolved ad- (c) [Reserved]
versely to the practitioner. (d) Preliminary screening of information
(b) Conditions imposed with discipline. or evidence. The OED Director shall ex-
When imposing discipline, the USPTO amine all information or evidence con-
Director may condition reinstatement cerning possible grounds for discipline
upon the practitioner making restitu- of a practitioner.
tion, successfully completing a profes- (e) Notification of investigation. The
sional responsibility course or exam- OED Director shall notify the practi-
ination, or any other condition deemed tioner in writing of the initiation of an
appropriate under the circumstances. investigation into whether a practi-
(c) Transfer to disability inactive sta- tioner has engaged in conduct consti-
tus. The USPTO Director, after notice tuting possible grounds for discipline.
and opportunity for a hearing may, and (f) Request for information and evidence
where grounds exist to believe a practi- by OED Director.
tioner has been transferred to dis- (1) In the course of the investigation,
ability inactive status in another juris- the OED Director may request infor-
diction, or has been judicially declared mation and evidence regarding possible
incompetent; judicially ordered to be grounds for discipline of a practitioner
involuntarily committed after a hear- from:
ing on the grounds of incompetency or (i) The grievant,
disability, or placed by court order (ii) The practitioner, or
(iii) Any person who may reasonably
under guardianship or conservatorship,
be expected to provide information and
transfer the practitioner to disability
evidence needed in connection with the
inactive status.
grievance or investigation.
[73 FR 47689, Aug. 14, 2008, as amended at 78 (2) The OED Director may request in-
FR 20200, Apr. 3, 2013] formation and evidence regarding pos-
sible grounds for discipline of a practi-
§ 11.21 Warnings. tioner from a non-grieving client ei-
A warning is neither public nor a dis- ther after obtaining the consent of the
ciplinary sanction. The OED Director practitioner or upon a finding by a
412
Contact Member of the Committee on cause to believe that grounds exist for
Discipline, appointed in accordance discipline.
with § 11.23(d), that good cause exists to [73 FR 47689, Aug. 14, 2008, as amended at 77
believe that the possible ground for dis- FR 45251, July 31, 2012; 78 FR 20200, Apr. 3,
cipline alleged has occurred with re- 2013]
spect to non-grieving clients. Neither a
request for, nor disclosure of, such in- § 11.23 Committee on Discipline.
formation shall constitute a violation (a) The USPTO Director shall ap-
of any USPTO Rules of Professional point a Committee on Discipline. The
Conduct. Committee on Discipline shall consist
(g) Where the OED Director makes a of at least three employees of the Of-
request under paragraph (f)(2) of this fice. None of the Committee members
section to a Contact Member of the shall report directly or indirectly to
Committee on Discipline, such Contact the OED Director or any employee des-
Member shall not, with respect to the ignated by the USPTO Director to de-
practitioner connected to the OED Di- cide disciplinary matters. Each Com-
rector’s request, participate in the mittee member shall be a member in
Committee on Discipline panel that good standing of the bar of the highest
renders a probable cause determination court of a State. The Committee mem-
under paragraph (b)(1) of this section bers shall select a Chairperson from
concerning such practitioner, and that among themselves. Three Committee
members will constitute a panel of the
forwards the probable cause finding
Committee.
and recommendation to the OED Direc-
(b) Powers and duties of the Committee
tor under paragraph (b)(2) of this sec- on Discipline. The Committee shall
tion. have the power and duty to:
(h) Disposition of investigation. Upon (1) Meet in panels at the request of
the conclusion of an investigation, the the OED Director and, after reviewing
OED Director may: evidence presented by the OED Direc-
(1) Close the investigation without tor, by majority vote of the panel, de-
issuing a warning, or taking discipli- termine whether there is probable
nary action; cause to bring charges under § 11.32
(2) Issue a warning to the practi- against a practitioner; and
tioner; (2) Prepare and forward its own prob-
(3) Institute formal charges upon the able cause findings and recommenda-
approval of the Committee on Dis- tions to the OED Director.
cipline; or (c) No discovery shall be authorized
(4) Enter into a settlement agree- of, and no member of the Committee on
ment with the practitioner and submit Discipline shall be required to testify
the same for approval of the USPTO about deliberations of, the Committee
Director. on Discipline or of any panel.
(i) Closing investigation. The OED Di- (d) The Chairperson shall appoint the
members of the panels and a Contact
rector shall terminate an investigation
Member of the Committee on Dis-
and decline to refer a matter to the
cipline.
Committee on Discipline if the OED
Director determines that: § 11.24 Reciprocal discipline.
(1) The information or evidence is un-
(a) Notification of OED Director. With-
founded; in thirty days of being publicly cen-
(2) The information or evidence re- sured, publicly reprimanded, subjected
lates to matters not within the juris- to probation, disbarred or suspended by
diction of the Office; another jurisdiction, or being
(3) As a matter of law, the conduct disciplinarily disqualified from partici-
about which information or evidence pating in or appearing before any Fed-
has been obtained does not constitute eral program or agency, a practitioner
grounds for discipline, even if the con- subject to the disciplinary jurisdiction
duct may involve a legal dispute; or of the Office shall notify the OED Di-
(4) The available evidence is insuffi- rector in writing of the same. A practi-
cient to conclude that there is probable tioner is deemed to be disbarred if he
413
§ 11.24 37 CFR Ch. I (7–1–16 Edition)
or she is disbarred, excluded on con- public reprimand, probation, disbar-

sent, or has resigned in lieu of a dis- ment, suspension imposed by another
ciplinary proceeding. Upon receiving jurisdiction or disciplinary disquali-
notification from any source or other- fication imposed in the Federal pro-
wise learning that a practitioner sub- gram or agency has been stayed, any
ject to the disciplinary jurisdiction of reciprocal discipline imposed by the
the Office has been so publicly cen- USPTO may be deferred until the stay
sured, publicly reprimanded, subjected expires.
to probation, disbarred, suspended or (d) Hearing and discipline to be im-
disciplinarily disqualified, the OED Di- posed. (1) The USPTO Director shall
rector shall obtain a certified copy of hear the matter on the documentary
the record or order regarding the pub- record unless the USPTO Director de-
lic censure, public reprimand, proba- termines that an oral hearing is nec-
tion, disbarment, suspension or dis- essary. After expiration of the forty
ciplinary disqualification and file the days from the date of the notice pursu-
same with the USPTO Director. The ant to provisions of paragraph (b) of
OED Director shall, in addition, with- this section, the USPTO Director shall
out Committee on Discipline author- consider any timely filed response and
ization, file with the USPTO Director a shall impose the identical public cen-
complaint complying with § 11.34 sure, public reprimand, probation, dis-
against the practitioner predicated barment, suspension or disciplinary
upon the public censure, public rep- disqualification unless the practitioner
rimand, probation, disbarment, suspen- clearly and convincingly demonstrates,
sion or disciplinary disqualification. and the USPTO Director finds there is
The OED Director shall request the a genuine issue of material fact that:
USPTO Director to issue a notice and (i) The procedure elsewhere was so
order as set forth in paragraph (b) of lacking in notice or opportunity to be
this section. heard as to constitute a deprivation of
(b) Notification served on practitioner. due process;
Upon receipt of a certified copy of the (ii) There was such infirmity of proof
record or order regarding the practi- establishing the conduct as to give rise
tioner being so publicly censured, pub- to the clear conviction that the Office
licly reprimanded, subjected to proba- could not, consistently with its duty,
tion, disbarred, suspended or accept as final the conclusion on that
disciplinarily disqualified together subject;
with the complaint, the USPTO Direc- (iii) The imposition of the same pub-
tor shall issue a notice directed to the lic censure, public reprimand, proba-
practitioner in accordance with § 11.35 tion, disbarment, suspension or dis-
and to the OED Director containing: ciplinary disqualification by the Office
(1) A copy of the record or order re- would result in grave injustice; or
garding the public censure, public rep- (iv) Any argument that the practi-
rimand, probation, disbarment, suspen- tioner was not publicly censured, pub-
sion or disciplinary disqualification; licly reprimanded, placed on probation,
(2) A copy of the complaint; and disbarred, suspended or disciplinarily
(3) An order directing the practi- disqualified.
tioner to file a response with the (2) If the USPTO Director determines
USPTO Director and the OED Director, that there is no genuine issue of mate-
within forty days of the date of the no- rial fact, the USPTO Director shall
tice establishing a genuine issue of ma- enter an appropriate final order. If the
terial fact predicated upon the grounds USPTO Director is unable to make
set forth in paragraphs (d)(1)(i) through such determination because there is a
(d)(1)(iv) of this section that the impo- genuine issue of material fact, the
sition of the identical public censure, USPTO Director shall enter an appro-
public reprimand, probation, disbar- priate order:
ment, suspension or disciplinary dis- (i) Referring the complaint to a hear-
qualification would be unwarranted ing officer for a formal hearing and
and the reasons for that claim. entry of an initial decision in accord-
(c) Effect of stay in another jurisdic- ance with the other rules in this part,
tion. In the event the public censure, and
414
(ii) Directing the practitioner to file diction of the Office has been convicted
an answer to the complaint in accord- of a crime, the OED Director shall
ance with § 11.36. make a preliminary determination
(e) Adjudication in another jurisdiction whether the crime constitutes a seri-
or Federal agency or program. In all ous crime warranting interim suspen-
other respects, a final adjudication in sion. If the crime is a serious crime,
another jurisdiction or Federal agency the OED Director shall file with the
or program that a practitioner, wheth- USPTO Director proof of the convic-
er or not admitted in that jurisdiction, tion and request the USPTO Director
has been guilty of misconduct shall es- to issue a notice and order set forth in
tablish a prima facie case by clear and paragraph (b)(2) of this section. The
convincing evidence that the practi- OED Director shall in addition, with-
tioner has engaged in misconduct out Committee on Discipline author-
under § 11.804. ization, file with the USPTO Director a
(f) Reciprocal discipline—action where complaint against the practitioner
practice has ceased. Upon request by the complying with § 11.34 predicated upon
practitioner, reciprocal discipline may the conviction of a serious crime. If the
be imposed nunc pro tunc only if the crime is not a serious crime, the OED
practitioner promptly notified the OED Director shall process the matter in
Director of his or her censure, public the same manner as any other informa-
reprimand, probation, disbarment, sus- tion or evidence of a possible violation
pension or disciplinary disqualification of any USPTO Rule of Professional
in another jurisdiction, and establishes Conduct coming to the attention of the
by clear and convincing evidence that OED Director.
the practitioner voluntarily ceased all
(b) Interim suspension and referral for
activities related to practice before the
disciplinary proceeding. All proceedings
Office and complied with all provisions
under this section shall be handled as
of § 11.58. The effective date of any pub-
expeditiously as possible.
lic censure, public reprimand, proba-
tion, suspension, disbarment or dis- (1) The USPTO Director has author-
ciplinary disqualification imposed nunc ity to place a practitioner on interim
pro tunc shall be the date the practi- suspension after hearing the request
tioner voluntarily ceased all activities for interim suspension on the documen-
related to practice before the Office tary record.
and complied with all provisions of (2) Notification served on practitioner.
§ 11.58. Upon receipt of a certified copy of the
(g) Reinstatement following reciprocal court record, docket entry or judgment
discipline proceeding. A practitioner demonstrating that the practitioner
may petition for reinstatement under has been so convicted together with
conditions set forth in § 11.60 no sooner the complaint, the USPTO Director
than completion of the period of recip- shall forthwith issue a notice directed
rocal discipline imposed, and compli- to the practitioner in accordance with
ance with all provisions of § 11.58. §§ 11.35(a), (b) or (c), and to the OED Di-
rector, containing:
FR 20200, Apr. 3, 2013] (i) A copy of the court record, docket
entry, or judgment of conviction;
§ 11.25 Interim suspension and dis- (ii) A copy of the complaint; and
cipline based upon conviction of (iii) An order directing the practi-
committing a serious crime. tioner to file a response with the
(a) Notification of OED Director. Upon USPTO Director and the OED Director,
being convicted of a crime in a court of within forty days of the date of the no-
the United States, any State, or a for- tice, establishing that there is a gen-
eign country, a practitioner subject to uine issue of material fact that the
the disciplinary jurisdiction of the Of- crime did not constitute a serious
fice shall notify the OED Director in crime, the practitioner is not the indi-
writing of the same within thirty days vidual found guilty of the crime, or
from the date of such conviction. Upon that the conviction was so lacking in
being advised or learning that a practi- notice or opportunity to be heard as to

tioner subject to the disciplinary juris- constitute a deprivation of due process.
415
§ 11.25 37 CFR Ch. I (7–1–16 Edition)
(3) Hearing and final order on request sion and a hearing on the formal
for interim suspension. The request for charges in a complaint filed as a con-
interim suspension shall be heard by sequence of the conviction, a certified
the USPTO Director on the documen- copy of the court record, docket entry,
tary record unless the USPTO Director or judgment of conviction in a court of
determines that the practitioner’s re- the United States or any State shall
sponse establishes a genuine issue of establish a prima facie case by clear
material fact that: The crime did not and convincing evidence that the prac-
constitute a serious crime, the practi- titioner was convicted of a serious
tioner is not the person who committed crime and that the conviction was not
the crime, or that the conviction was lacking in notice or opportunity to be
so lacking in notice or opportunity to heard as to constitute a deprivation of
be heard as to constitute a deprivation due process.
of due process. If the USPTO Director (2) Conviction in a foreign country. For
determines that there is no genuine purposes of a hearing for interim sus-
issue of material fact regarding the de- pension and on the formal charges filed
fenses set forth in the preceding sen- as a result of a finding of guilt, a cer-
tence, the USPTO Director shall enter tified copy of the court record, docket
an appropriate final order regarding entry, or judgment of conviction in a
the OED Director’s request for interim court of a foreign country shall estab-
suspension regardless of the pendency lish a prima facie case by clear and con-
of any criminal appeal. If the USPTO vincing evidence that the practitioner
Director is unable to make such deter- was convicted of a serious crime and
mination because there is a genuine that the conviction was not lacking in
issue of material fact, the USPTO Di- notice or opportunity to be heard as to
rector shall enter a final order dis- constitute a deprivation of due process.
missing the request and enter a further However, nothing in this paragraph
order referring the complaint to a shall preclude the practitioner from
hearing officer for a hearing and entry demonstrating by clear and convincing
of an initial decision in accordance evidence in any hearing on a request
with the other rules in this part and di- for interim suspension there is a gen-
recting the practitioner to file an an- uine issue of material fact to be consid-
swer to the complaint in accordance ered when determining if the elements
with § 11.36. of a serious crime were committed in
(4) Termination. The USPTO Director violating the criminal law of the for-
has authority to terminate an interim eign country and whether a discipli-
suspension. In the interest of justice, nary sanction should be entered.
the USPTO Director may terminate an (d) Crime determined not to be serious
interim suspension at any time upon a crime. If the USPTO Director deter-
showing of extraordinary cir- mines that the crime is not a serious
cumstances, after affording the OED crime, the complaint shall be referred
Director an opportunity to respond to to the OED Director for investigation
the request to terminate interim sus- under § 11.22 and processing as is appro-
pension. priate.
(5) Referral for disciplinary proceeding. (e) Reinstatement—(1) Upon reversal or
Upon entering a final order imposing setting aside a finding of guilt or a con-
interim suspension, the USPTO Direc- viction. If a practitioner suspended sole-
tor shall refer the complaint to a hear- ly under the provisions of paragraph (b)
ing officer to conduct a formal discipli- of this section demonstrates that the
nary proceeding. The formal discipli- underlying finding of guilt or convic-
nary proceeding, however, shall be tion of serious crimes has been re-
stayed by the hearing officer until all versed or vacated, the order for interim
direct appeals from the conviction are suspension shall be vacated and the
concluded. Review of the initial deci- practitioner shall be placed on active
sion of the hearing officer shall be pur- status unless the finding of guilt was
suant to § 11.55. reversed or the conviction was set
(c) Proof of conviction and guilt—(1) aside with respect to less than all seri-
Conviction in the United States. For pur- ous crimes for which the practitioner
poses of a hearing for interim suspen- was found guilty or convicted. The
416
vacating of the interim suspension will exclusion and delivering to the OED
not terminate any other disciplinary Director an affidavit declaring the con-
proceeding then pending against the sent of the practitioner to exclusion
practitioner, the disposition of which and stating:
shall be determined by the hearing offi- (1) That the practitioner’s consent is
cer before whom the matter is pending, freely and voluntarily rendered, that
on the basis of all available evidence the practitioner is not being subjected
other than the finding of guilt or con- to coercion or duress, and that the
viction. practitioner is fully aware of the impli-
(2) Following conviction of a serious cations of consenting to exclusion;
crime. Any practitioner convicted of a (2) That the practitioner is aware
serious crime and disciplined in whole that there is currently pending an in-
or in part in regard to that conviction, vestigation into, or a proceeding in-
may petition for reinstatement under volving allegations of misconduct, the
conditions set forth in § 11.60 no sooner nature of which shall be specifically
than five years after being discharged set forth in the affidavit to the satis-
following completion of service of his faction of the OED Director;
or her sentence, or after completion of (3) That the practitioner acknowl-
service under probation or parole, edges that, if and when he or she ap-
whichever is later. plies for reinstatement under § 11.60,
(f) Notice to clients and others of in- the OED Director will conclusively pre-
terim suspension. An interim suspension sume, for the limited purpose of deter-
under this section shall constitute a mining the application for reinstate-
suspension of the practitioner for the ment, that:
purpose of § 11.58. (i) The facts upon which the inves-
[73 FR 47689, Aug. 14, 2008, as amended at 78 tigation or complaint is based are true,
FR 20200, Apr. 3, 2013] and
(ii) The practitioner could not have
§ 11.26 Settlement. successfully defended himself or herself
Before or after a complaint under against the allegations in the inves-
§ 11.34 is filed, a settlement conference tigation or charges in the complaint.
may occur between the OED Director (b) Action by the USPTO Director.
and the practitioner. Any offers of Upon receipt of the required affidavit,
compromise and any statements made the OED Director shall file the affi-
during the course of settlement discus- davit and any related papers with the
sions shall not be admissible in subse- USPTO Director for review and ap-
quent proceedings. The OED Director proval. Upon such approval, the
may recommend to the USPTO Direc- USPTO Director will enter an order ex-
tor any settlement terms deemed ap- cluding the practitioner on consent and
propriate, including steps taken to cor- providing other appropriate actions.
rect or mitigate the matter forming Upon entry of the order, the excluded
the basis of the action, or to prevent practitioner shall comply with the re-
recurrence of the same or similar con- quirements set forth in § 11.58.
duct. A settlement agreement shall be (c) When an affidavit under para-
effective only upon entry of a final de- graph (a) of this section is received
cision by the USPTO Director. after a complaint under § 11.34 has been
filed, the OED Director shall notify the
§ 11.27 Exclusion on consent. hearing officer. The hearing officer
(a) Required affidavit. The OED Direc- shall enter an order transferring the
tor may confer with a practitioner con- disciplinary proceeding to the USPTO
cerning possible violations by the prac- Director, who may enter an order ex-
titioner of the Rules of Professional cluding the practitioner on consent.
Conduct whether or not a disciplinary (d) Reinstatement. Any practitioner
proceeding has been instituted. A prac- excluded on consent under this section
titioner who is the subject of an inves- may not petition for reinstatement for
tigation or a pending disciplinary pro- five years. A practitioner excluded on
ceeding based on allegations of grounds consent who intends to reapply for ad-
for discipline, and who desires to re- mission to practice before the Office
sign, may only do so by consenting to must comply with the provisions of
417
§ 11.28 37 CFR Ch. I (7–1–16 Edition)
§ 11.58, and apply for reinstatement in (B) An admission, denial or allega-

accordance with § 11.60. Failure to com- tion of lack of knowledge with respect
ply with the provisions of § 11.58 con- to each of the material facts in the
stitutes grounds for denying an appli- practitioner’s motion and accom-
cation for reinstatement. panying documents; and
(C) Affidavits, medical reports, offi-
§ 11.28 Incapacitated practitioners in a cial records, or other documents set-
disciplinary proceeding. ting forth facts on which the OED Di-
(a) Holding in abeyance a disciplinary rector intends to rely for purposes of
proceeding because of incapacitation due disputing or denying any material fact
to a current disability or addiction—(1) set forth in the practitioner’s papers.
Practitioner’s motion. In the course of a (2) Disposition of practitioner’s motion.
disciplinary proceeding under § 11.32, The hearing officer shall decide the
but before the date set by the hearing motion and any response thereto. The
officer for a hearing, the practitioner motion shall be granted upon a show-
may file a motion requesting the hearing of good cause to believe the practi-
ing officer to enter an order holding tioner to be incapacitated as alleged. If
such proceeding in abeyance based on the required showing is made, the hear-
the contention that the practitioner is ing officer shall enter an order holding
suffering from a disability or addiction the disciplinary proceeding in abey-
that makes it impossible for the practi- ance. In the case of addiction to drugs
tioner to adequately defend the charges or intoxicants, the order may provide
in the disciplinary proceeding. that the practitioner will not be re-
(i) Content of practitioner’s motion. turned to active status absent satisfac-
The practitioner’s motion shall, in ad- tion of specified conditions. Upon re-
dition to any other requirement of ceipt of the order, the OED Director
§ 11.43, include or have attached there- shall transfer the practitioner to dis-
to: ability inactive status, give notice to
(A) A brief statement of all material the practitioner, cause notice to be
facts; published, and give notice to appro-
(B) Affidavits, medical reports, offi- priate authorities in the Office that the
cial records, or other documents and practitioner has been placed on dis-
the opinion of at least one medical ex- ability inactive status. The practi-
pert setting forth and establishing any tioner shall comply with the provisions
of the material facts on which the of § 11.58, and shall not engage in prac-
practitioner is relying; tice before the Office in patent, trade-
(C) A statement that the practitioner mark and other non-patent law until a
acknowledges the alleged incapacity by determination is made of the practi-
reason of disability or addiction; tioner’s capability to resume practice
(D) Written consent that the practi- before the Office in a proceeding under
tioner be transferred to disability inac- paragraph (c) or paragraph (d) of this
tive status if the motion is granted; section. A practitioner on disability in-
and active status must seek permission
(E) A written agreement by the prac- from the OED Director to engage in an
titioner to not practice before the Of- activity authorized under § 11.58(e).
fice in patent, trademark or other non- Permission will be granted only if the
patent cases while on disability inac- practitioner has complied with all the
tive status. conditions of §§ 11.58(a) through 11.58(d)
(ii) Response. The OED Director’s re- applicable to disability inactive status.
sponse to any motion hereunder shall In the event that permission is grant-
be served and filed within thirty days ed, the practitioner shall fully comply
after service of the practitioner’s mo- with the provisions of § 11.58(e).
tion unless such time is shortened or (b) Motion for reactivation. Any practi-
enlarged by the hearing officer for good tioner transferred to disability inac-
cause shown, and shall set forth the tive status in a disciplinary proceeding
following: may file with the hearing officer a mo-
(A) All objections, if any, to the action for reactivation once a year begin-
tions requested in the motion; ning at any time not less than one year
418
after the initial effective date of inac- pacitated from defending himself or
tivation, or once during any shorter in- herself, or is not incapacitated from
terval provided by the order issued pur- practicing before the Office, the hear-
suant to paragraph (a)(2) of this section ing officer shall take such action as is
or any modification thereof. If the mo- deemed appropriate, including the
tion is granted, the disciplinary pro- entry of an order directing the reac-
ceeding shall resume under such sched- tivation of the practitioner and re-
ule as may be established by the hear- sumption of the disciplinary pro-
ing officer. ceeding.
(c) Contents of motion for reactivation.
A motion by the practitioner for reac- § 11.29 Reciprocal transfer or initial
tivation alleging that a practitioner transfer to disability inactive sta-
has recovered from a prior disability or tus.
addiction shall be accompanied by all (a) Notification of OED Director. (1)
available medical reports or similar Transfer to disability inactive status
documents relating thereto. The hear- in another jurisdiction as grounds for
ing officer may require the practi- reciprocal transfer by the Office. With-
tioner to present such other informa- in thirty days of being transferred to
tion as is necessary. disability inactive status in another ju-
(d) OED Director’s motion to resume risdiction, a practitioner subject to the
disciplinary proceeding held in abeyance. disciplinary jurisdiction of the Office
(1) The OED Director, having good shall notify the OED Director in writ-
cause to believe a practitioner is no ing of the transfer. Upon notification
longer incapacitated, may file a mo- from any source that a practitioner
tion requesting the hearing officer to subject to the disciplinary jurisdiction
terminate a prior order holding in of the Office has been transferred to
abeyance any pending proceeding be- disability inactive status in another ju-
cause of the practitioner’s disability or risdiction, the OED Director shall ob-
addiction. The hearing officer shall de- tain a certified copy of the order. The
cide the matter presented by the OED OED Director shall file with the
Director’s motion hereunder based on USPTO Director:
the affidavits and other admissible evi- (i) The order;
dence attached to the OED Director’s (ii) A request that the practitioner be
motion and the practitioner’s response. transferred to disability inactive sta-
The OED Director bears the burden of tus, including the specific grounds
showing by clear and convincing evi- therefor; and
dence that the practitioner is able to (iii) A request that the USPTO Direc-
defend himself or herself. If there is tor issue a notice and order as set forth
any genuine issue as to one or more in paragraph (b) of this section.
material facts, the hearing officer will (2) Involuntary commitment, adjudica-
hold an evidentiary hearing. tion of incompetency or court ordered
(2) The hearing officer, upon receipt placement under guardianship or con-
of the OED Director’s motion under servatorship as grounds for initial trans-
paragraph (d)(1) of this section, may di- fer to disability inactive status. Within
rect the practitioner to file a response. thirty days of being judicially declared
If the hearing officer requires the prac- incompetent, being judicially ordered
titioner to file a response, the practi- to be involuntarily committed after a
tioner must present clear and con- hearing on the grounds of incom-
vincing evidence that the prior self-al- petency or disability, or being placed
leged disability or addiction continues by court order under guardianship or
to make it impossible for the practi- conservatorship in another jurisdic-
tioner to defend himself or herself in tion, a practitioner subject to the dis-
the underlying proceeding being held in ciplinary jurisdiction of the Office
abeyance. shall notify the OED Director in writ-
(e) Action by the hearing officer. If, in ing of such judicial action. Upon notifi-
deciding a motion under paragraph (b) cation from any source that a practi-
or (d) of this section, the hearing offi- tioner subject to the disciplinary juris-
cer determines that there is good cause diction of the Office has been subject to
to believe the practitioner is not inca- such judicial action, the OED Director
419
§ 11.29 37 CFR Ch. I (7–1–16 Edition)
shall obtain a certified copy of the (d) Hearing and transfer to disability
order. The OED Director shall file with inactive status. The request for transfer
the USPTO Director: to disability inactive status shall be
(i) The order; heard by the USPTO Director on the
(ii) A request that the practitioner be documentary record unless the USPTO
transferred to disability inactive sta- Director determines that there is a
tus, including the specific grounds genuine issue of material fact, in which
therefor; and case the USPTO Director may deny the
(iii) A request that the USPTO Direc- request. Upon the expiration of 30 days
tor issue a notice and order as set forth from the date of the notice pursuant to
in paragraph (b) of this section. the provisions of paragraph (b) of this
(b) Notice served on practitioner. Upon section, the USPTO Director shall con-
sider any timely filed response and im-
receipt of a certified copy of an order
pose the identical transfer to disability
or declaration issued by another juris-
inactive status based on the practi-
diction demonstrating that a practi-
tioner’s transfer to disability status in
tioner subject to the disciplinary juris-
another jurisdiction, or shall transfer
diction of the Office has been trans-
the practitioner to disability inactive
ferred to disability inactive status, ju-
status based on judicially declared in-
dicially declared incompetent, judi-
competence, judicially ordered invol-
cially ordered to be involuntarily com-
untary commitment on the grounds of
mitted after a judicial hearing on the
incompetency or disability, or court-
grounds of incompetency or disability,
ordered placement under guardianship
or placed by court order under guard-
or conservatorship, unless the practi-
ianship or conservatorship, together tioner demonstrates by clear and con-
with the OED Director’s request, the vincing evidence, or the USPTO Direc-
USPTO Director shall issue a notice, tor finds there is a genuine issue of ma-
comporting with § 11.35, directed to the terial fact by clear and convincing evi-
practitioner containing: dence that:
(1) A copy of the order or declaration (1) The procedure was so lacking in
from the other jurisdiction, notice or opportunity to be heard as to
(2) A copy of the OED Director’s re- constitute a deprivation of due process;
quest; and (2) There was such infirmity of proof
(3) An order directing the practi- establishing the transfer to disability
tioner to file a response with the status, judicial declaration of incom-
USPTO Director and the OED Director, petence, judicial order for involuntary
within 30 days from the date of the no- commitment on the grounds of incom-
tice, establishing a genuine issue of petency or disability, or placement by
material fact supported by an affidavit court order under guardianship or con-
and predicated upon the grounds set servatorship that the USPTO Director
forth in § 11.29(d) (1) through (4) that a could not, consistent with Office’s
transfer to disability inactive status duty, accept as final the conclusion on
would be unwarranted and the reasons that subject;
therefor. (3) The imposition of the same dis-
(c) Effect of stay of transfer, judicially ability status or transfer to disability
declared incompetence, judicially ordered status by the USPTO Director would
involuntarily commitment on the grounds result in grave injustice; or
of incompetency or disability, or court-or- (4) The practitioner is not the indi-
dered placement under guardianship or vidual transferred to disability status,
conservatorship. In the event the trans- judicially declared incompetent, judi-
fer, judicially declared incompetence, cially ordered for involuntary commit-
judicially ordered involuntary commitment on the grounds of incompetency
ment on the grounds of incompetency or disability, or placed by court order
or disability, or court-ordered place- under guardianship or conservatorship.
ment under guardianship or con- (5) If the USPTO Director determines
servatorship in the other jurisdiction that there is no genuine issue of mate-
has been stayed there, any reciprocal rial fact with regard to any of the ele-
transfer or transfer by the Office may ments of paragraphs (d)(1) through (4)
be deferred until the stay expires. of this section, the USPTO Director
420
shall enter an appropriate final order. practitioner to disability inactive sta-

If the USPTO Director is unable to tus.
make that determination because there (2) Orders to be public. The OED Direc-
is a genuine issue of material fact, the tor shall publicize any reciprocal trans-
USPTO Director shall enter an appro- fer to disability inactive status or
priate order dismissing the OED Direc- transfer to disability inactive status in
tor’s request for such reason. the same manner as for the imposition
(e) Adjudication in other jurisdiction. of public discipline.
In all other aspects, a final adjudica- (i) Employment of practitioners on dis-
tion in another jurisdiction that a ability inactive status. A practitioner on
practitioner be transferred to dis- disability inactive status must seek
ability inactive status, is judicially de- permission from the OED Director to
clared incompetent, is judicially or- engage in an activity authorized under
dered to be involuntarily committed on § 11.58(e). Permission will be granted
the grounds of incompetency or dis- only if the practitioner has complied
ability, or is placed by court order with all the conditions of §§ 11.58(a)
under guardianship or conservatorship through 11.58(d) applicable to disability
shall establish the disability for pur- inactive status. In the event that per-
poses of a reciprocal transfer to or mission is granted, the practitioner
transfer to disability status before the shall fully comply with the provisions
Office. of § 11.58(e).
(f) A practitioner who is transferred (j) Reinstatement from disability inac-
to disability inactive status under this tive status. (1) Generally. No practi-
section shall be deemed to have been tioner reciprocally transferred or
refused recognition to practice before transferred to disability inactive sta-
the Office for purposes of 35 U.S.C. 32. tus under this section may resume ac-
(g) Order imposing reciprocal transfer to tive status except by order of the OED
disability inactive status or order impos- Director.
ing initial transfer to disability inactive (2) Petition. A practitioner recip-
status. An order by the USPTO Director rocally transferred or transferred to
imposing reciprocal transfer to dis- disability inactive status shall be enti-
ability inactive status, or transferring tled to petition the OED Director for
a practitioner to disability inactive transfer to active status once a year,
status shall be effective immediately, or at whatever shorter intervals the
and shall be for an indefinite period USPTO Director may direct in the
until further order of the USPTO Di- order transferring or reciprocally
rector. A copy of the order transferring transferring the practitioner to dis-
a practitioner to disability inactive ability inactive status or any modifica-
status shall be served upon the practi- tion thereof.
tioner, the practitioner’s guardian, (3) Examination. Upon the filing of a
and/or the director of the institution to petition for transfer to active status,
which the practitioner has been com- the OED Director may take or direct
mitted in the manner the USPTO Di- whatever action is deemed necessary or
rector may direct. A practitioner recip- proper to determine whether the inca-
rocally transferred or transferred to pacity has been removed, including a
disability inactive status shall comply direction for an examination of the
with the provisions of § 11.58, and shall practitioner by qualified medical or
not engage in practice before the Office psychological experts designated by
in patent, trademark and other non- the OED Director. The expense of the
patent law unless and until reinstated examination shall be paid and borne by
to active status. the practitioner.
(h) Confidentiality of proceeding; Or- (4) Required disclosure, waiver of privi-
ders to be public—(1) Confidentiality of lege. With the filing of a petition for re-
proceeding. All proceedings under this instatement to active status, the prac-
section involving allegations of dis- titioner shall be required to disclose
ability of a practitioner shall be kept the name of each psychiatrist, psychol-
confidential until and unless the ogist, physician and hospital or other
USPTO Director enters an order recip- institution by whom or in which the

rocally transferring or transferring the practitioner has been examined or
421
§§ 11.30–11.31 37 CFR Ch. I (7–1–16 Edition)
treated for the disability since the specified in § 11.23(b) whether there is
transfer to disability inactive status. probable cause to bring disciplinary
The practitioner shall furnish to the charges. If the panel of the Committee
OED Director written consent to the on Discipline determines that probable
release of information and records re- cause exists to bring charges, the OED
lating to the incapacity if requested by Director may institute a disciplinary
the OED Director. proceeding by filing a complaint under
(5) Learning in the law, examination. § 11.34.
The OED Director may direct that the [78 FR 20201, Apr. 3, 2013]
practitioner establish proof of com-
petence and learning in law, which § 11.33 [Reserved]
proof may include passing the registra-
tion examination. § 11.34 Complaint.
(6) Granting of petition for transfer to (a) A complaint instituting a discipli-
active status. The OED Director shall nary proceeding shall:
grant the petition for transfer to active (1) Name the person who is the sub-
status upon a showing by clear and ject of the complaint who may then be
convincing evidence that the inca- referred to as the ‘‘respondent’’;
pacity has been removed.
(2) Give a plain and concise descrip-
(7) Reinstatement in other jurisdiction. tion of the respondent’s alleged
If a practitioner is reciprocally trans- grounds for discipline;
ferred to disability inactive status on
(3) State the place and time, not less
the basis of a transfer to disability in-
than thirty days from the date the
active status in another jurisdiction,
complaint is filed, for filing an answer
the OED Director may dispense with
by the respondent;
further evidence that the disability has
(4) State that a decision by default
been removed and may immediately di-
may be entered if an answer is not
rect reinstatement to active status
timely filed by the respondent; and
upon such terms as are deemed proper
(5) Be signed by the OED Director.
and advisable.
(b) A complaint will be deemed suffi-
(8) Judicial declaration of competency.
cient if it fairly informs the respondent
If a practitioner is transferred to dis-
of any grounds for discipline, and
ability inactive status on the basis of a
where applicable, the USPTO Rules of
judicially declared incompetence, judi-
Professional Conduct that form the
cially ordered involuntary commit-
basis for the disciplinary proceeding so
ment on the grounds of incompetency
that the respondent is able to ade-
or disability, or court-ordered place-
quately prepare a defense.
ment under guardianship or con-
servatorship has been declared to be (c) The complaint shall be filed in the
competent, the OED Director may dis- manner prescribed by the USPTO Di-
pense with further evidence that the rector.
incapacity to practice law has been re- (d) Time for filing a complaint. A com-
moved and may immediately direct re- plaint shall be filed within one year
instatement to active status. after the date on which the OED Direc-
tor receives a grievance forming the
§§ 11.30–11.31 [Reserved] basis of the complaint. No complaint
shall be filed more than ten years after
§ 11.32 Instituting a disciplinary pro- the date on which the misconduct
ceeding. forming the basis for the proceeding
If after conducting an investigation occurred.
under § 11.22(a), the OED Director is of (e) Tolling agreements. The one-year
the opinion that grounds exist for dis- period for filing a complaint under
cipline under § 11.19(b), the OED Direc- paragraph (d) of this section shall be
tor, after complying where necessary tolled if the involved practitioner and
with the provisions of 5 U.S.C. 558(c), the OED Director agree in writing to
may convene a meeting of a panel of such tolling.
the Committee on Discipline. If con-

vened, the panel of the Committee on FR 45251, July 31, 2012; 78 FR 20201, Apr. 3,
Discipline shall then determine as 2013]
422
§ 11.35 Service of complaint. in the manner provided for in para-

graph (a) or (b) of this section.
(a) A complaint may be served on a
respondent in any of the following [73 FR 47689, Aug. 14, 2008, as amended at 78
methods: FR 20201, Apr. 3, 2013; 79 FR 63042, Oct. 22,
(1) By delivering a copy of the com- 2014]
plaint personally to the respondent, in
which case the individual who gives the § 11.36 Answer to complaint.
complaint to the respondent shall file (a) Time for answer. An answer to a
an affidavit with the OED Director in- complaint shall be filed within the
dicating the time and place the com- time set in the complaint but in no
plaint was delivered to the respondent. event shall that time be less than thir-
(2) By mailing a copy of the com- ty days from the date the complaint is
plaint by Priority Mail Express®, first- filed.
class mail, or any delivery service that (b) With whom filed. The answer shall
provides ability to confirm delivery or
be filed in writing with the hearing of-
attempted delivery to:
ficer at the address specified in the
(i) A respondent who is a registered
complaint. The hearing officer may ex-
practitioner at the address provided to
tend the time for filing an answer once
OED pursuant to § 11.11, or
for a period of no more than thirty
(ii) A respondent who is not reg-
istered at the last address for the re- days upon a showing of good cause,
spondent known to the OED Director. provided a motion requesting an exten-
(3) By any method mutually agree- sion of time is filed within thirty days
able to the OED Director and the re- after the date the complaint is served
spondent. on respondent. A copy of the answer,
(4) In the case of a respondent who and any exhibits or attachments there-
resides outside the United States, by to, shall be served on the OED Direc-
sending a copy of the complaint by any tor.
delivery service that provides ability (c) Content. The respondent shall in-
to confirm delivery or attempted deliv- clude in the answer a statement of the
ery, to: facts that constitute the grounds of de-
(i) A respondent who is a registered fense and shall specifically admit or
practitioner at the address provided to deny each allegation set forth in the
OED pursuant to § 11.11; or complaint. The respondent shall not
(ii) A respondent who is not reg- deny a material allegation in the com-
istered at the last address for the re- plaint that the respondent knows to be
spondent known to the OED Director. true or state that respondent is with-
(b) If a copy of the complaint cannot out sufficient information to form a be-
be delivered to the respondent through lief as to the truth of an allegation,
any one of the procedures in paragraph when in fact the respondent possesses
(a) of this section, the OED Director that information. The respondent shall
shall serve the respondent by causing also state affirmatively in the answer
an appropriate notice to be published special matters of defense and any in-
in the Official Gazette for two consecu- tent to raise a disability as a miti-
tive weeks, in which case, the time for
gating factor. If respondent intends to
filing an answer shall be thirty days
raise a special matter of defense or dis-
from the second publication of the no-
ability, the answer shall specify the de-
tice. Failure to timely file an answer
will constitute an admission of the al- fense or disability, its nexus to the
legations in the complaint in accord- misconduct, and the reason it provides
ance with paragraph (d) of § 11.36, and a defense or mitigation. A respondent
the hearing officer may enter an initial who fails to do so cannot rely on a spe-
decision on default. cial matter of defense or disability.
(c) If the respondent is known to the The hearing officer may, for good
OED Director to be represented by an cause, allow the respondent to file the
attorney under § 11.40(a), a copy of the statement late, grant additional hear-
complaint shall be served on the attor- ing preparation time, or make other
ney in lieu of service on the respondent appropriate orders.
423
§ 11.37 37 CFR Ch. I (7–1–16 Edition)
(d) Failure to deny allegations in com- and have suitable experience and train-
plaint. Every allegation in the coming conducting hearings, reaching a de-
plaint that is not denied by a respond- termination, and rendering an initial
ent in the answer shall be deemed to be decision in an equitable manner.
admitted and may be considered prov- (c) Responsibilities. The hearing offi-
en. The hearing officer at any hearing cer shall have authority, consistent
need receive no further evidence with with specific provisions of these regu-
respect to that allegation. lations, to:
(e) Default judgment. Failure to time- (1) Administer oaths and affirma-
ly file an answer will constitute an ad-
tions;
mission of the allegations in the com-
plaint and may result in entry of de- (2) Make rulings upon motions and
fault judgment. other requests;
(3) Rule upon offers of proof, receive
§ 11.37 [Reserved] relevant evidence, and examine wit-
nesses;
§ 11.38 Contested case. (4) Authorize the taking of a deposi-
Upon the filing of an answer by the tion of a witness in lieu of personal ap-
respondent, a disciplinary proceeding pearance of the witness before the
shall be regarded as a contested case hearing officer;
within the meaning of 35 U.S.C. 24. Evi- (5) Determine the time and place of
dence obtained by a subpoena issued any hearing and regulate its course and
under 35 U.S.C. 24 shall not be admitted conduct;
into the record or considered unless (6) Hold or provide for the holding of
leave to proceed under 35 U.S.C. 24 was conferences to settle or simplify the
previously authorized by the hearing issues;
officer.
(7) Receive and consider oral or writ-
§ 11.39 Hearing officer; appointment; ten arguments on facts or law;
responsibilities; review of interlocu- (8) Adopt procedures and modify pro-
tory orders; stays. cedures for the orderly disposition of
(a) Appointment. A hearing officer, ap- proceedings;
pointed by the USPTO Director under 5 (9) Make initial decisions under
U.S.C. 3105 or 35 U.S.C. 32, shall con- §§ 11.25 and 11.54; and
duct disciplinary proceedings as pro- (10) Perform acts and take measures
vided by this Part. as necessary to promote the efficient,
(b) Independence of the Hearing Offi- timely, and impartial conduct of any
cer. (1) A hearing officer appointed in disciplinary proceeding.
accordance with paragraph (a) of this (d) Time for making initial decision.
section shall not be subject to first The hearing officer shall set times and
level or second level supervision by ei- exercise control over a disciplinary
ther the USPTO Director or OED Di- proceeding such that an initial decision
rector, or his or her designee. under § 11.54 is normally issued within
(2) A hearing officer appointed in ac- nine months of the date a complaint is
cordance with paragraph (a) of this sec- filed. The hearing officer may, how-
tion shall not be subject to supervision
ever, issue an initial decision more
of the person(s) investigating or pros-
than nine months after a complaint is
ecuting the case.
filed if there exist circumstances, in
(3) A hearing officer appointed in ac-
cordance with paragraph (a) of this sec- his or her opinion, that preclude
tion shall be impartial, shall not be an issuance of an initial decision within
individual who has participated in any nine months of the filing of the com-
manner in the decision to initiate the plaint.
proceedings, and shall not have been (e) Review of interlocutory orders. The
employed under the immediate super- USPTO Director will not review an in-
vision of the practitioner. terlocutory order of a hearing officer
(4) A hearing officer appointed in ac- except:
cordance with paragraph (a) of this sec- (1) When the hearing officer shall be
tion shall be admitted to practice law of the opinion:
424
(i) That the interlocutory order in- Law shall remain screened from the in-
volves a controlling question of proce- vestigation and prosecution of all dis-
dure or law as to which there is a sub- ciplinary proceedings in order that
stantial ground for a difference of opin- they shall be available as counsel to
ion, and the USPTO Director in deciding dis-
(ii) That an immediate decision by ciplinary proceedings unless access is
the USPTO Director may materially appropriate to perform their duties.
advance the ultimate termination of After a final decision is entered in a
the disciplinary proceeding, or disciplinary proceeding, the OED Di-
(2) In an extraordinary situation rector and attorneys representing the
where the USPTO Director deems that OED Director shall be available to
justice requires review. counsel the USPTO Director, the Gen-
(f) Stays pending review of interlocu- eral Counsel, and the Deputy General
tory order. If the OED Director or a re- Counsel for General Law in any further
spondent seeks review of an interlocu- proceedings.
tory order of a hearing officer under
paragraph (b)(2) of this section, any § 11.41 Filing of papers.
time period set by the hearing officer (a) The provisions of §§ 1.8 and 2.197 of
for taking action shall not be stayed this subchapter do not apply to dis-
unless ordered by the USPTO Director ciplinary proceedings. All papers filed
or the hearing officer. after the complaint and prior to entry
(g) The hearing officer shall engage of an initial decision by the hearing of-
in no ex parte discussions with any ficer shall be filed with the hearing of-
party on the merits of the complaint, ficer at an address or place designated
beginning with appointment and end- by the hearing officer.
ing when the final agency decision is (b) All papers filed after entry of an
issued. initial decision by the hearing officer
shall be filed with the USPTO Director.
§ 11.40 Representative for OED Direc- A copy of the paper shall be served on
tor or respondent. the OED Director. The hearing officer
(a) A respondent may represent him- or the OED Director may provide for
self or herself, or be represented by an filing papers and other matters by
attorney before the Office in connec- hand, by Priority Mail Express®, or by
tion with an investigation or discipli- other means.
nary proceeding. The attorney shall [69 FR 35452, June 24, 2004, as amended at 79
file a written declaration that he or FR 63042, Oct. 22, 2014]
she is an attorney within the meaning
of § 11.1 and shall state: § 11.42 Service of papers.
(1) The address to which the attorney (a) All papers other than a complaint
wants correspondence related to the in- shall be served on a respondent who is
vestigation or disciplinary proceeding represented by an attorney by:
sent, and (1) Delivering a copy of the paper to
(2) A telephone number where the at- the office of the attorney; or
torney may be reached during normal (2) Mailing a copy of the paper by
business hours. first-class mail, Priority Mail Ex-
(b) The Deputy General Counsel for press®, or other delivery service to the
Intellectual Property and Solicitor, attorney at the address provided by the
and attorneys in the Office of the So- attorney under § 11.40(a)(1); or
licitor shall represent the OED Direc- (3) Any other method mutually
tor. The attorneys representing the agreeable to the attorney and a rep-
OED Director in disciplinary pro- resentative for the OED Director.
ceedings shall not consult with the (b) All papers other than a complaint
USPTO Director, the General Counsel, shall be served on a respondent who is
the Deputy General Counsel for Gen- not represented by an attorney by:
eral Law, or an individual designated (1) Delivering a copy of the paper to
by the USPTO Director to decide dis- the respondent; or
ciplinary matters regarding the pro- (2) Mailing a copy of the paper by
ceeding. The General Counsel and the first-class mail, Priority Mail Ex-
Deputy General Counsel for General press®, or other delivery service to the
425
§ 11.43 37 CFR Ch. I (7–1–16 Edition)
respondent at the address to which a the motion, the parties resolve issues
complaint may be served or such other raised by a motion presented to the
address as may be designated in writ- hearing officer, the parties shall
ing by the respondent; or promptly notify the hearing officer.
(3) Any other method mutually
agreeable to the respondent and a rep- § 11.44 Hearings.
resentative for the OED Director.
(a) The hearing officer shall preside
(c) A respondent shall serve on the
over hearings in disciplinary pro-
representative for the OED Director
one copy of each paper filed with the ceedings. The hearing officer shall set
hearing officer or the OED Director. A the time and place for the hearing. In
paper may be served on the representa- cases involving an incarcerated re-
tive for the OED Director by: spondent, any necessary oral hearing
(1) Delivering a copy of the paper to may be held at the location of incarcer-
the representative; or ation. Oral hearings will be steno-
(2) Mailing a copy of the paper by graphically recorded and transcribed,
first-class mail, Priority Mail Ex- and the testimony of witnesses will be
press®, or other delivery service to an received under oath or affirmation. The
address designated in writing by the hearing officer shall conduct the hear-
representative; or ing as if the proceeding were subject to
(3) Any other method mutually 5 U.S.C. 556. A copy of the transcript of
agreeable to the respondent and the the hearing shall become part of the
representative. record. A copy of the transcript shall
(d) Each paper filed in a disciplinary be provided to the OED Director and
proceeding shall contain therein a cer- the respondent at the expense of the
tificate of service indicating: Office.
(1) The date on which service was (b) If the respondent to a disciplinary
made; and proceeding fails to appear at the hear-
(2) The method by which service was
ing after a notice of hearing has been
made.
given by the hearing officer, the hear-
(e) The hearing officer or the USPTO
Director may require that a paper be ing officer may deem the respondent to
served by hand or by Priority Mail Ex- have waived the right to a hearing and
press®. may proceed with the hearing in the
(f) Service by mail is completed when absence of the respondent.
the paper mailed in the United States (c) A hearing under this section will
is placed into the custody of the U.S. not be open to the public except that
Postal Service. the hearing officer may grant a request
by a respondent to open his or her
[79 FR 63042, Oct. 22, 2014]
hearing to the public and make the
§ 11.43 Motions. record of the disciplinary proceeding
available for public inspection, pro-
Motions, including all prehearing vided, a protective order is entered to
motions commonly filed under the Fed-
exclude from public disclosure informa-
eral Rules of Civil Procedure, shall be
tion which is privileged or confidential
filed with the hearing officer. The
under applicable laws or regulations.
hearing officer will determine whether
replies to responses will be authorized § 11.45 Amendment of pleadings.
and the time period for filing such a re-
sponse. No motion shall be filed with The OED Director may, without
the hearing officer unless such motion Committee on Discipline authoriza-
is supported by a written statement by tion, but with the authorization of the
the moving party that the moving hearing officer, amend the complaint
party or attorney for the moving party to include additional charges based
has conferred with the opposing party upon conduct committed before or
or attorney for the opposing party in after the complaint was filed. If
an effort in good faith to resolve by amendment of the complaint is author-
agreement the issues raised by the mo- ized, the hearing officer shall authorize
tion and has been unable to reach amendment of the answer. Any party
agreement. If, prior to a decision on who would otherwise be prejudiced by
426
the amendment will be given reason- with the approval of, and under such
able opportunity to meet the allega- conditions as may be deemed appro-
tions in the complaint or answer as priate by, the hearing officer. Deposi-
amended, and the hearing officer shall tions may be taken upon oral or writ-
make findings on any issue presented ten questions, upon not less than ten
by the complaint or answer as amend- days’ written notice to the other party,
ed. before any officer authorized to admin-
ister an oath or affirmation in the
§§ 11.46–11.48 [Reserved]
place where the deposition is to be
§ 11.49 Burden of proof. taken. The parties may waive the re-
In a disciplinary proceeding, the OED quirement of ten days’ notice and depo-
Director shall have the burden of prov- sitions may then be taken of a witness
ing the violation by clear and con- at a time and place mutually agreed to
vincing evidence and a respondent shall by the parties. When a deposition is
have the burden of proving any affirm- taken upon written questions, copies of
ative defense by clear and convincing the written questions will be served
evidence. upon the other party with the notice,
and copies of any written cross-ques-
§ 11.50 Evidence. tions will be served by hand or Priority
(a) Rules of evidence. The rules of evi- Mail Express® not less than five days
dence prevailing in courts of law and before the date of the taking of the
equity are not controlling in hearings deposition unless the parties mutually
in disciplinary proceedings. However, agree otherwise. A party on whose be-
the hearing officer shall exclude evi- half a deposition is taken shall file a
dence that is irrelevant, immaterial, or copy of a transcript of the deposition
unduly repetitious. signed by a court reporter with the
(b) Depositions. Depositions of wit- hearing officer and shall serve one copy
nesses taken pursuant to § 11.51 may be upon the opposing party. Expenses for
admitted as evidence. a court reporter and preparing, serving,
(c) Government documents. Official and filing depositions shall be borne by
documents, records, and papers of the the party at whose instance the deposi-
Office, including, but not limited to,
tion is taken. Depositions may not be
all papers in the file of a disciplinary
taken to obtain discovery, except as
investigation, are admissible without
provided for in paragraph (b) of this
extrinsic evidence of authenticity.
These documents, records, and papers section.
may be evidenced by a copy certified as (b) When the OED Director and the
correct by an employee of the Office. respondent agree in writing, a deposi-
(d) Exhibits. If any document, record, tion of any witness who will appear
or other paper is introduced in evi- voluntarily may be taken under such
dence as an exhibit, the hearing officer terms and conditions as may be mutu-
may authorize the withdrawal of the ally agreeable to the OED Director and
exhibit subject to any conditions the the respondent. The deposition shall
hearing officer deems appropriate. not be filed with the hearing officer
(e) Objections. Objections to evidence and may not be admitted in evidence
will be in short form, stating the before the hearing officer unless he or
grounds of objection. Objections and she orders the deposition admitted in
rulings on objections will be a part of evidence. The admissibility of the dep-
the record. No exception to the ruling osition shall lie within the discretion
is necessary to preserve the rights of of the hearing officer who may reject
the parties. the deposition on any reasonable basis
§ 11.51 Depositions. including the fact that demeanor is in-
volved and that the witness should
(a) Depositions for use at the hearing have been called to appear personally
in lieu of personal appearance of a wit- before the hearing officer.
ness before the hearing officer may be
taken by respondent or the OED Direc- [69 FR 35452, June 24, 2004, as amended at 79
tor upon a showing of good cause and FR 63043, Oct. 22, 2014]
427
§ 11.52 37 CFR Ch. I (7–1–16 Edition)
§ 11.52 Discovery. (e) The hearing officer may require

parties to file and serve, prior to any
Discovery shall not be authorized ex-
hearing, a pre-hearing statement that
cept as follows:
contains:
(a) After an answer is filed under
(1) A list (together with a copy) of all
§ 11.36 and when a party establishes
proposed exhibits to be used in connec-
that discovery is reasonable and rel-
tion with a party’s case-in-chief;
evant, the hearing officer, under such
(2) A list of proposed witnesses;
conditions as he or she deems appro-
(3) As to each proposed expert wit-
priate, may order an opposing party to:
ness:
(1) Answer a reasonable number of
(i) An identification of the field in
written requests for admission or inter-
which the individual will be qualified
rogatories;
as an expert;
(2) Produce for inspection and copy- (ii) A statement as to the subject
ing a reasonable number of documents; matter on which the expert is expected
and to testify; and
(3) Produce for inspection a reason- (iii) A statement of the substance of
able number of things other than docu- the facts and opinions to which the ex-
ments. pert is expected to testify;
(b) Discovery shall not be authorized (4) Copies of memoranda reflecting
under paragraph (a) of this section of respondent’s own statements to admin-
any matter which: istrative representatives.
(1) Will be used by another party
solely for impeachment; § 11.53 Proposed findings and conclu-
(2) Is not available to the party under sions; post-hearing memorandum.
35 U.S.C. 122; Except in cases in which the respond-
(3) Relates to any other disciplinary ent has failed to answer the complaint
proceeding; or amended complaint, the hearing of-
(4) Relates to experts except as the ficer, prior to making an initial deci-
hearing officer may require under para- sion, shall afford the parties a reason-
graph (e) of this section; able opportunity to submit proposed
(5) Is privileged; or findings and conclusions and a post-
(6) Relates to mental impressions, hearing memorandum in support of the
conclusions, opinions, or legal theories proposed findings and conclusions.
of any attorney or other representative
of a party. § 11.54 Initial decision of hearing offi-
(c) The hearing officer may deny dis- cer.
covery requested under paragraph (a) (a) The hearing officer shall make an
of this section if the discovery sought: initial decision in the case. The deci-
(1) Will unduly delay the disciplinary sion will include:
proceeding; (1) A statement of findings of fact
(2) Will place an undue burden on the and conclusions of law, as well as the
party required to produce the discovery reasons or bases for those findings and
sought; or conclusions with appropriate ref-
(3) Consists of information that is erences to the record, upon all the ma-
available: terial issues of fact, law, or discretion
(i) Generally to the public; presented on the record, and
(ii) Equally to the parties; or (2) An order of default judgment, of
(iii) To the party seeking the dis- suspension or exclusion from practice,
covery through another source. of reprimand, of probation or an order
(d) Prior to authorizing discovery dismissing the complaint. The order
under paragraph (a) of this section, the also may impose any conditions
hearing officer shall require the party deemed appropriate under the cir-
seeking discovery to file a motion cumstances. The hearing officer shall
(§ 11.43) and explain in detail, for each transmit a copy of the decision to the
request made, how the discovery OED Director and to the respondent.
sought is reasonable and relevant to an After issuing the decision, the hearing
issue actually raised in the complaint officer shall transmit the entire record
or the answer. to the OED Director. In the absence of
428
an appeal to the USPTO Director, the the hearing officer and supporting rea-
decision of the hearing officer, includ- sons for those exceptions. Any excep-
ing a default judgment, will, without tion not raised will be deemed to have
further proceedings, become the deci- been waived and will be disregarded by
sion of the USPTO Director thirty days the USPTO Director in reviewing the
from the date of the decision of the initial decision.
hearing officer. (c) All briefs shall:
(b) The initial decision of the hearing (1) Be filed with the USPTO Director
officer shall explain the reason for any at the address set forth in § 1.1(a)(3)(ii)
default judgment, reprimand, suspen- of this subchapter and served on the
sion, exclusion, or probation, and shall opposing party;
explain any conditions imposed with (2) Include separate sections con-
discipline. In determining any sanc- taining a concise statement of the dis-
tion, the following four factors must be puted facts and disputed points of law;
considered if they are applicable: and
(1) Whether the practitioner has vio- (3) Be typed on 81⁄2 by 11-inch paper,
lated a duty owed to a client, to the and comply with Rule 32(a)(4)–(6) of the
public, to the legal system, or to the Federal Rules of Appellate Procedure.
profession; (d) An appellant’s, cross-appellant’s,
(2) Whether the practitioner acted in- appellee’s, and cross-appellee’s brief
tentionally, knowingly, or negligently; shall be no more than thirty pages in
(3) The amount of the actual or po- length, and comply with Rule 28(a)(2),
tential injury caused by the practi- (3), and (5) through (10) of the Federal
tioner’s misconduct; and Rules of Appellate Procedure. Any
(4) The existence of any aggravating reply brief shall be no more than fif-
or mitigating factors. teen pages in length, and shall comply
[73 FR 47689, Aug. 14, 2008, as amended at 78 with Rule 28(a)(2), (3), (8), and (9) of the
FR 20201, Apr. 3, 2013] Federal Rules of Appellate Procedure.
(e) The USPTO Director may refuse
§ 11.55 Appeal to the USPTO Director. entry of a nonconforming brief.
(a) Within thirty days after the date (f) The USPTO Director will decide
of the initial decision of the hearing of- the appeal on the record made before
ficer under §§ 11.25 or 11.54, either party the hearing officer.
may appeal to the USPTO Director. (g) Unless the USPTO Director per-
The appeal shall include the appel- mits, no further briefs or motions shall
lant’s brief. If more than one appeal is be filed.
filed, the party who files the appeal (h) The USPTO Director may order
first is the appellant for purpose of this reopening of a disciplinary proceeding
rule. If appeals are filed on the same in accordance with the principles that
day, the respondent is the appellant. If govern the granting of new trials. Any
an appeal is filed, then the OED Direc- request to reopen a disciplinary pro-
tor shall transmit the entire record to ceeding on the basis of newly discov-
the USPTO Director. Any cross-appeal ered evidence must demonstrate that
shall be filed within fourteen days after the newly discovered evidence could
the date of service of the appeal pursu- not have been discovered by due dili-
ant to § 11.42, or thirty days after the gence.
date of the initial decision of the hear- (i) In the absence of an appeal by the
ing officer, whichever is later. The OED Director, failure by the respond-
cross-appeal shall include the cross-ap- ent to appeal under the provisions of
pellant’s brief. Any appellee or cross- this section shall result in the initial
appellee brief must be filed within thir- decision being final and effective thirty
ty days after the date of service pursu- days from the date of the initial deci-
ant to § 11.42 of an appeal or cross-ap- sion of the hearing officer.
peal. Any reply brief must be filed
within fourteen days after the date of § 11.56 Decision of the USPTO Direc-
service of any appellee or cross-appel- tor.
lee brief. (a) The USPTO Director shall decide
(b) An appeal or cross-appeal must an appeal from an initial decision of

include exceptions to the decisions of the hearing officer. On appeal from the
429
§ 11.57 37 CFR Ch. I (7–1–16 Edition)
initial decision, the USPTO Director tion in accordance with Rule 4 of the
has authority to conduct a de novo re- Federal Rules of Civil Procedure and
view of the factual record. The USPTO § 104.2 of this Title.
Director may affirm, reverse, or mod- (b) Except as provided for in § 11.56(c),
ify the initial decision or remand the an order for discipline in a final deci-
matter to the hearing officer for such sion will not be stayed except on proof
further proceedings as the USPTO Di- of exceptional circumstances.
rector may deem appropriate. In mak-
ing a final decision, the USPTO Direc- § 11.58 Duties of disciplined or re-
tor shall review the record or the por- signed practitioner, or practitioner
tions of the record designated by the on disability inactive status.
parties. The USPTO Director shall (a) An excluded, suspended or re-
transmit a copy of the final decision to signed practitioner, or practitioner
the OED Director and to the respond- transferred to disability inactive sta-
ent. tus shall not engage in any practice of
(b) A final decision of the USPTO Di- patent, trademark and other non-pat-
rector may dismiss a disciplinary pro- ent law before the Office. An excluded,
ceeding, reverse or modify the initial suspended or resigned practitioner will
decision, reprimand a practitioner, or not be automatically reinstated at the
may suspend or exclude the practi- end of his or her period of exclusion or
tioner from practice before the Office. suspension. An excluded, suspended or
A final decision suspending or exclud- resigned practitioner, or practitioner
ing a practitioner shall require compli- transferred to disability inactive sta-
ance with the provisions of § 11.58. The tus must comply with the provisions of
final decision may also condition the this section and § 11.60 to be reinstated.
reinstatement of the practitioner upon Failure to comply with the provisions
a showing that the practitioner has of this section may constitute both
taken steps to correct or mitigate the grounds for denying reinstatement or
matter forming the basis of the action, readmission; and cause for further ac-
or to prevent recurrence of the same or tion, including seeking further exclu-
similar conduct. sion, suspension, and for revocation of
(c) The respondent or the OED Direc- any pending probation.
tor may make a single request for re- (b) Unless otherwise ordered by the
consideration or modification of the USPTO Director, any excluded, sus-
decision by the USPTO Director if filed pended or resigned practitioner, or
within twenty days from the date of practitioner transferred to disability
entry of the decision. No request for re- inactive status shall:
consideration or modification shall be (1) Within thirty days after the date
granted unless the request is based on of entry of the order of exclusion, sus-
newly discovered evidence or error of pension, acceptance of resignation, or
law or fact, and the requestor must transfer to disability inactive status:
demonstrate that any newly discovered (i) File a notice of withdrawal as of
evidence could not have been discov- the effective date of the exclusion, sus-
ered any earlier by due diligence. Such pension, acceptance of resignation, or
a request shall have the effect of stay- transfer to disability inactive status in
ing the effective date of the order of each pending patent and trademark ap-
discipline in the final decision. The de- plication, each pending reexamination
cision by the USPTO Director is effec- and interference or trial proceeding,
tive on its date of entry. and every other matter pending in the
Office, together with a copy of the no-
§ 11.57 Review of final decision of the tices sent pursuant to paragraphs (b)
USPTO Director. and (c) of this section;
(a) Review of the final decision by (ii) Provide notice to all State and
the USPTO Director in a disciplinary Federal jurisdictions and administra-
case may be had, subject to § 11.55(d), tive agencies to which the practitioner
by a petition filed in accordance with is admitted to practice and all clients
35 U.S.C. 32. The Respondent must the practitioner represents having im-
serve the USPTO Director with the pe- mediate or prospective business before
tition. Respondent must serve the peti- the Office in patent, trademark and
430
other non-patent matters of the order (vii) Serve all notices required by
of exclusion, suspension, acceptance of paragraphs (b)(1)(ii) and (b)(1)(iii) of
resignation, or transferred to disability this section by certified mail, return
inactive status and of the practi- receipt requested, unless mailed
tioner’s consequent inability to act as abroad. If mailed abroad, all notices
a practitioner after the effective date shall be served with a receipt to be
of the order; and that, if not rep- signed and returned to the practi-
resented by another practitioner, the tioner.
client should act promptly to sub- (2) Within forty-five days after entry
stitute another practitioner, or to seek of the order of suspension, exclusion, or
legal advice elsewhere, calling atten- of acceptance of resignation, the prac-
tion to any urgency arising from the titioner shall file with the OED Direc-
circumstances of the case; tor an affidavit of compliance certi-
(iii) Provide notice to the practi- fying that the practitioner has fully
tioner(s) for all opposing parties (or, to complied with the provisions of the
the parties in the absence of a practi- order, this section, and with § 11.116 for
tioner representing the parties) in mat- withdrawal from representation. Ap-
ters pending before the Office of the pended to the affidavit of compliance
practitioner’s exclusion, suspension, shall be:
resignation, or transfer to disability (i) A copy of each form of notice, the
inactive status and, that as a con- names and addresses of the clients,
sequence, the practitioner is disquali- practitioners, courts, and agencies to
fied from acting as a practitioner re- which notices were sent, and all return
garding matters before the Office after receipts or returned mail received up
the effective date of the suspension, ex- to the date of the affidavit. Supple-
clusion, resignation or transfer to dis- mental affidavits shall be filed cov-
ability inactive status, and state in the ering subsequent return receipts and
notice the mailing address of each cli- returned mail. Such names and ad-
ent of the excluded, suspended or re- dresses of clients shall remain con-
fidential unless otherwise ordered by
signed practitioner, or practitioner
the USPTO Director;
transferred to disability inactive sta-
(ii) A schedule showing the location,
tus who is a party in the pending mat-
title and account number of every bank
ter;
account designated as a client or trust
(iv) Deliver to all clients having im- account, deposit account in the Office,
mediate or prospective business before or other fiduciary account, and of
the Office in patent, trademark or every account in which the practi-
other non-patent matters any papers or tioner holds or held as of the entry
other property to which the clients are date of the order any client, trust, or
entitled, or shall notify the clients and fiduciary funds for practice before the
any co-practitioner of a suitable time Office;
and place where the papers and other (iii) A schedule describing the practi-
property may be obtained, calling at- tioner’s disposition of all client and fi-
tention to any urgency for obtaining duciary funds for practice before the
the papers or other property; Office in the practitioner’s possession,
(v) Relinquish to the client, or other custody or control as of the date of the
practitioner designated by the client, order or thereafter;
all funds for practice before the Office, (iv) Such proof of the proper distribu-
including any legal fees paid in ad- tion of said funds and the closing of
vance that have not been earned and such accounts as has been requested by
any advanced costs not expended; the OED Director, including copies of
(vi) Take any necessary and appro- checks and other instruments;
priate steps to remove from any tele- (v) A list of all other State, Federal,
phone, legal, or other directory any ad- and administrative jurisdictions to
vertisement, statement, or representa- which the practitioner is admitted to
tion which would reasonably suggest practice; and
that the practitioner is authorized to (vi) An affidavit describing the pre-
practice patent, trademark, or other cise nature of the steps taken to re-
non-patent law before the Office; and move from any telephone, legal, or
431
§ 11.58 37 CFR Ch. I (7–1–16 Edition)
other directory any advertisement, or suspension, acceptance of resigna-

statement, or representation which tion, or transfer to disability inactive
would reasonably suggest that the status shall not accept any new re-
practitioner is authorized to practice tainer regarding immediate or prospec-
patent, trademark, or other non-patent tive business before the Office, or en-
law before the Office. The affidavit gage as a practitioner for another in
shall also state the residence or other any new case or legal matter regarding
address of the practitioner to which practice before the Office. The ex-
communications may thereafter be di- cluded, suspended or resigned practi-
rected, and list all State and Federal tioner, or practitioner transferred to
jurisdictions, and administrative agen- disability inactive status shall be
cies to which the practitioner is admit- granted limited recognition for a pe-
ted to practice. The OED Director may riod of thirty days. During the thirty-
require such additional proof as is day period of limited recognition, the
deemed necessary. In addition, for the excluded, suspended or resigned practi-
period of discipline, an excluded or sus- tioner, or practitioner transferred to
pended practitioner, or a practitioner disability inactive status shall con-
transferred to disability inactive sta- clude work on behalf of a client on any
tus shall continue to file a statement matters that were pending before the
in accordance with § 11.11, regarding Office on the date of entry of the order
any change of residence or other ad- of exclusion or suspension, or accept-
dress to which communications may ance of resignation. If such work can-
thereafter be directed, so that the ex- not be concluded, the excluded, sus-
cluded or suspended practitioner, or pended or resigned practitioner, or
practitioner transferred to disability practitioner transferred to disability
inactive status may be located if a inactive status shall so advise the cli-
grievance is received regarding any ent so that the client may make other
conduct occurring before or after the arrangements.
exclusion or suspension. The practi- (d) Required records. An excluded, sus-
tioner shall retain copies of all notices pended or resigned practitioner, or
sent and shall maintain complete practitioner transferred to disability
records of the steps taken to comply inactive status shall keep and main-
with the notice requirements. tain records of the various steps taken
(3) Not hold himself or herself out as under this section, so that in any sub-
authorized to practice law before the sequent proceeding proof of compliance
Office. with this section and with the exclu-
(4) Not advertise the practitioner’s sion or suspension order will be avail-
availability or ability to perform or able. The OED Director will require the
render legal services for any person practitioner to submit such proof as a
having immediate or prospective busi- condition precedent to the granting of
ness before the Office as to that busi- any petition for reinstatement.
ness. (e) An excluded, suspended or re-
(5) Not render legal advice or services signed practitioner, or practitioner on
to any person having immediate or pro- disability inactive status who aids an-
spective business before the Office as other practitioner in any way in the
to that business. other practitioner’s practice of law be-
(6) Promptly take steps to change fore the Office, may, under the direct
any sign identifying the practitioner’s supervision of the other practitioner,
or the practitioner’s firm’s office and act as a paralegal for the other practi-
the practitioner’s or the practitioner’s tioner or perform other services for the
firm’s stationery to delete therefrom other practitioner which are normally
any advertisement, statement, or rep- performed by laypersons, provided:
resentation which would reasonably (1) The excluded, suspended or re-
suggest that the practitioner is author- signed practitioner, or practitioner
ized to practice law before the Office. transferred to disability inactive sta-
(c) An excluded, suspended or re- tus is a salaried employee of:
signed practitioner, or practitioner (i) The other practitioner;
transferred to disability inactive sta- (ii) The other practitioner’s law firm;
tus after entry of the order of exclusion or
432
(iii) A client-employer who employs tioner transferred to disability inac-

the other practitioner as a salaried em- tive status, and
ployee; (ii) Shows by clear and convincing
(2) The other practitioner assumes evidence that the excluded, suspended
full professional responsibility to any or resigned practitioner, or practi-
client and the Office for any work per- tioner transferred to disability inac-
formed by the excluded, suspended or tive status has complied with the pro-
resigned practitioner for the other visions of this section and all USPTO
practitioner; Rules of Professional Conduct; and
(3) The excluded, suspended or re- (2) The other practitioner shall have
signed practitioner, or practitioner filed with the OED Director a written
transferred to disability inactive sta- statement which:
tus does not: (i) Shows that the other practitioner
(i) Communicate directly in writing, has read the affidavit required by para-
orally, or otherwise with a client of the graph (d)(1) of this section and that the
other practitioner in regard to any im- other practitioner believes every state-
mediate or prospective business before ment in the affidavit to be true, and
the Office; (ii) States why the other practitioner
(ii) Render any legal advice or any believes that the excluded, suspended
legal services to a client of the other or resigned practitioner, or practi-
practitioner in regard to any imme- tioner transferred to disability inac-
diate or prospective business before the tive status has complied with para-
Office; or graph (c) of this section.
(iii) Meet in person or in the presence [73 FR 47689, Aug. 14, 2008, as amended at 77
of the other practitioner in regard to FR 46630, Aug. 6, 2012; 78 FR 20201, Apr. 3,
any immediate or prospective business 2013]
before the Office, with:
(A) Any Office employee in connec- § 11.59 Dissemination of disciplinary
tion with the prosecution of any pat- and other information.
ent, trademark, or other case; (a) The OED Director shall inform
(B) Any client of the other practi- the public of the disposition of each
tioner, the other practitioner’s law matter in which public discipline has
firm, or the client-employer of the been imposed, and of any other changes
other practitioner; or in a practitioner’s registration status.
(C) Any witness or potential witness Public discipline includes exclusion, as
whom the other practitioner, the other well as exclusion on consent; suspen-
practitioner’s law firm, or the other sion; and public reprimand. Unless oth-
practitioner’s client-employer may or erwise ordered by the USPTO Director,
intends to call as a witness in any pro- the OED Director shall give notice of
ceeding before the Office. The term public discipline and the reasons for
‘‘witness’’ includes individuals who will the discipline to disciplinary enforce-
testify orally in a proceeding before, or ment agencies in the State where the
sign an affidavit or any other docu- practitioner is admitted to practice, to
ment to be filed in, the Office. courts where the practitioner is known
(f) When an excluded, suspended or to be admitted, and the public. If pub-
resigned practitioner, or practitioner lic discipline is imposed, the OED Di-
transferred to disability inactive sta- rector shall cause a final decision of
tus acts as a paralegal or performs the USPTO Director to be published.
services under paragraph (e) of this sec- Final decisions of the USPTO Director
tion, the practitioner shall not there- include default judgments. See
after be reinstated to practice before § 11.54(a)(2). If a private reprimand is
the Office unless: imposed, the OED Director shall cause
(1) The practitioner shall have filed a redacted version of the final decision
with the OED Director an affidavit to be published.
which: (b) Records available to the public. Un-
(i) Explains in detail the precise na- less the USPTO Director orders that
ture of all paralegal or other services the proceeding or a portion of the
performed by the excluded, suspended record be kept confidential, the OED

or resigned practitioner, or practi- Director’s records of every disciplinary
433
§ 11.60 37 CFR Ch. I (7–1–16 Edition)
proceeding where a practitioner is rep- statement accompanied by the fee re-

rimanded, suspended, or excluded, in- quired by § 1.21(a)(10) of this sub-
cluding when said sanction is imposed chapter. The petition for reinstatement
by default judgment, shall be made shall be filed with the OED Director.
available to the public upon written re- An excluded or suspended practitioner
quest, except that information may be who has violated any provision of
withheld as necessary to protect the § 11.58 shall not be eligible for rein-
privacy of third parties or as directed statement until a continuous period of
in a protective order issued pursuant to the time in compliance with § 11.58 that
§ 11.44(c). The record of a proceeding is equal to the period of suspension or
that results in a practitioner’s transfer exclusion has elapsed. A resigned prac-
to disability inactive status shall not titioner shall not be eligible for rein-
be available to the public. statement until compliance with § 11.58
(c) Access to records of exclusion by is shown. If the excluded, suspended or
consent. Unless the USPTO Director or- resigned practitioner is not eligible for
ders that the proceeding or a portion of reinstatement, or if the OED Director
the record be kept confidential, an determines that the petition is insuffi-
order excluding a practitioner on con- cient or defective on its face, the OED
sent under § 11.27 and the affidavit re- Director may dismiss the petition. Oth-
quired under paragraph (a) of § 11.27 erwise the OED Director shall consider
shall be available to the public, except the petition for reinstatement. The ex-
that information in the order or affi- cluded, suspended or resigned practi-
davit may be withheld as necessary to tioner seeking reinstatement shall
protect the privacy of third parties or have the burden of proof by clear and
as directed in a protective order under convincing evidence. Such proof shall
§ 11.44(c). The affidavit required under be included in or accompany the peti-
paragraph (a) of § 11.27 shall not be used tion, and shall establish:
in any other proceeding except by
(1) That the excluded, suspended or
order of the USPTO Director or upon
resigned practitioner has the good
written consent of the practitioner.
moral character and reputation, com-
§ 11.60 Petition for reinstatement. petency, and learning in law required
under § 11.7 for admission;
(a) Restrictions on reinstatement. An
(2) That the resumption of practice
excluded, suspended or resigned practi-
before the Office will not be detri-
tioner shall not resume practice of pat-
mental to the administration of justice
ent, trademark, or other non-patent
or subversive to the public interest;
law before the Office until reinstated
by order of the OED Director or the and
USPTO Director. (3) That the suspended practitioner
(b) Petition for reinstatement. An ex- has complied with the provisions of
cluded or suspended practitioner shall § 11.58 for the full period of suspension,
be eligible to apply for reinstatement that the excluded practitioner has
only upon expiration of the period of complied with the provisions of § 11.58
suspension or exclusion and the practi- for at least five continuous years, or
tioner’s full compliance with § 11.58. An that the resigned practitioner has com-
excluded practitioner shall be eligible plied with § 11.58 upon acceptance of
to apply for reinstatement no earlier the resignation.
than at least five years from the effec- (d) Petitions for reinstatement—Action
tive date of the exclusion. A resigned by the OED Director granting reinstate-
practitioner shall be eligible to peti- ment. (1) If the excluded, suspended or
tion for reinstatement and must show resigned practitioner is found to have
compliance with § 11.58 no earlier than complied with paragraphs (c)(1)
at least five years from the date the through (c)(3) of this section, the OED
practitioner’s resignation is accepted Director shall enter an order of rein-
and an order is entered excluding the statement, which shall be conditioned
practitioner on consent. on payment of the costs of the discipli-
(c) Review of reinstatement petition. An nary proceeding to the extent set forth
excluded, suspended or resigned practi- in paragraphs (d)(2) and (3) of this sec-
tioner shall file a petition for rein- tion.
434
(2) Payment of costs of disciplinary pro- findings shall include on the first page,
ceedings. Prior to reinstatement to immediately beneath the caption of
practice, the excluded or suspended the case, a separate section entitled
practitioner shall pay the costs of the ‘‘Prior Proceedings’’ which shall state
disciplinary proceeding. The costs im- the docket number of the original dis-
posed pursuant to this section include ciplinary proceeding in which the ex-
all of the following: clusion or suspension was ordered.
(i) The actual expense incurred by (f) Resubmission of petitions for rein-
the OED Director or the Office for the statement. If a petition for reinstate-
original and copies of any reporter’s ment is denied, no further petition for
transcripts of the disciplinary pro- reinstatement may be filed until the
ceeding, and any fee paid for the serv- expiration of at least one year fol-
ices of the reporter; lowing the denial unless the order of
(ii) All expenses paid by the OED Di- denial provides otherwise.
rector or the Office which would qual- (g) Reinstatement proceedings open to
ify as taxable costs recoverable in civil public. Proceedings on any petition for
proceedings; and reinstatement shall be open to the pub-
(iii) The charges determined by the lic. Before reinstating any excluded or
OED Director to be ‘‘reasonable costs’’ suspended practitioner, the OED Direc-
of investigation, hearing, and review. tor shall publish a notice of the ex-
These amounts shall serve to defray cluded or suspended practitioner’s peti-
the costs, other than fees for services tion for reinstatement and shall permit
of attorneys and experts, of the Office the public a reasonable opportunity to
of Enrollment and Discipline in the comment or submit evidence with re-
preparation or hearing of the discipli- spect to the petition for reinstatement.
nary proceeding, and costs incurred in
the administrative processing of the §§ 11.61–11.99 [Reserved]
disciplinary proceeding.
(3) An excluded or suspended practi- Subpart D—USPTO Rules of
tioner may be granted relief, in whole Professional Conduct
or in part, only from an order assessing
costs under this section or may be SOURCE: 78 FR 20201, Apr. 3, 2013, unless
granted an extension of time to pay otherwise noted.
these costs, in the discretion of the
OED Director, upon grounds of hard- § 11.100 [Reserved]
ship, special circumstances, or other
good cause. CLIENT-PRACTITIONER RELATIONSHIP
(e) Petitions for reinstatement—Action
by the OED Director denying reinstate- § 11.101 Competence.
ment. If the excluded, suspended or re- A practitioner shall provide com-
signed practitioner is found unfit to re- petent representation to a client. Com-
sume the practice of patent law before petent representation requires the
the Office, the OED Director shall first legal, scientific, and technical knowl-
provide the excluded, suspended or re- edge, skill, thoroughness and prepara-
signed practitioner with an oppor- tion reasonably necessary for the rep-
tunity to show cause in writing why resentation.
the petition should not be denied. Fail-
ure to comply with § 11.12(c) shall con- § 11.102 Scope of representation and
stitute unfitness. If unpersuaded by the allocation of authority between cli-
showing, the OED Director shall deny ent and practitioner.
the petition. The OED Director may re- (a) Subject to paragraphs (c) and (d)
quire the excluded, suspended or re- of this section, a practitioner shall
signed practitioner, in meeting the re- abide by a client’s decisions concerning
quirements of § 11.7, to take and pass the objectives of representation and, as
an examination under § 11.7(b), ethics required by § 11.104, shall consult with
courses, and/or the Multistate Profes- the client as to the means by which
sional Responsibility Examination. they are to be pursued. A practitioner
The OED Director shall provide find- may take such action on behalf of the
ings, together with the record. The client as is impliedly authorized to
435
§ 11.103 37 CFR Ch. I (7–1–16 Edition)
carry out the representation. A practi- considered in determining the reason-

tioner shall abide by a client’s decision ableness of a fee include the following:
whether to settle a matter. (1) The time and labor required, the
(b) [Reserved] novelty and difficulty of the questions
(c) A practitioner may limit the involved, and the skill requisite to per-
scope of the representation if the limi- form the legal service properly;
tation is reasonable under the cir- (2) The likelihood, if apparent to the
cumstances and the client gives in- client, that the acceptance of the par-
formed consent. ticular employment will preclude other
(d) A practitioner shall not counsel a employment by the practitioner;
client to engage, or assist a client, in (3) The fee customarily charged in
conduct that the practitioner knows is
the locality for similar legal services;
criminal or fraudulent, but a practi-
tioner may discuss the legal con- (4) The amount involved and the re-
sequences of any proposed course of sults obtained;
conduct with a client and may counsel (5) The time limitations imposed by
or assist a client to make a good-faith the client or by the circumstances;
effort to determine the validity, scope, (6) The nature and length of the pro-
meaning or application of the law. fessional relationship with the client;
(7) The experience, reputation, and
§ 11.103 Diligence. ability of the practitioner or practi-
A practitioner shall act with reason- tioners performing the services; and
able diligence and promptness in rep- (8) Whether the fee is fixed or contin-
resenting a client. gent.
(b) The scope of the representation
§ 11.104 Communication. and the basis or rate of the fee and ex-
(a) A practitioner shall: penses for which the client will be re-
(1) Promptly inform the client of any sponsible shall be communicated to the
decision or circumstance with respect client, preferably in writing, before or
to which the client’s informed consent within a reasonable time after com-
is required by the USPTO Rules of Pro- mencing the representation, except
fessional Conduct; when the practitioner will charge a
(2) Reasonably consult with the cli- regularly represented client on the
ent about the means by which the cli- same basis or rate. Any changes in the
ent’s objectives are to be accomplished; basis or rate of the fee or expenses
(3) Keep the client reasonably in- shall also be communicated to the cli-
formed about the status of the matter; ent.
(4) Promptly comply with reasonable (c) A fee may be contingent on the
requests for information from the cli- outcome of the matter for which the
ent; and service is rendered, except in a matter
(5) Consult with the client about any in which a contingent fee is prohibited
relevant limitation on the practi-
by law. A contingent fee agreement
tioner’s conduct when the practitioner
shall be in a writing signed by the cli-
knows that the client expects assist-
ent and shall state the method by
ance not permitted by the USPTO
Rules of Professional Conduct or other which the fee is to be determined, in-
law. cluding the percentage or percentages
(b) A practitioner shall explain a that shall accrue to the practitioner in
matter to the extent reasonably nec- the event of settlement, trial or appeal;
essary to permit the client to make in- litigation and other expenses to be de-
formed decisions regarding the rep- ducted from the recovery; and whether
resentation. such expenses are to be deducted before
or after the contingent fee is cal-
§ 11.105 Fees. culated. The agreement must clearly
(a) A practitioner shall not make an notify the client of any expenses for
agreement for, charge, or collect an un- which the client will be liable whether
reasonable fee or an unreasonable or not the client is the prevailing

amount for expenses. The factors to be party. Upon conclusion of a contingent
436
fee matter, the practitioner shall pro- (5) To establish a claim or defense on
vide the client with a written state- behalf of the practitioner in a con-
ment stating the outcome of the mat- troversy between the practitioner and
ter and, if there is a recovery, showing the client, to establish a defense to a
the remittance to the client and the criminal charge or civil claim against
method of its determination. the practitioner based upon conduct in
(d) [Reserved] which the client was involved, or to re-
(e) A division of a fee between practi- spond to allegations in any proceeding
tioners who are not in the same firm concerning the practitioner’s represen-
may be made only if: tation of the client; or
(1) The division is in proportion to (6) To comply with other law or a
the services performed by each practi- court order.
tioner or each practitioner assumes (c) A practitioner shall disclose to
joint responsibility for the representa- the Office information necessary to
tion; comply with applicable duty of disclo-
(2) The client agrees to the arrange- sure provisions.
ment, including the share each practi-
§ 11.107 Conflict of interest; Current
tioner will receive, and the agreement clients.
is confirmed in writing; and
(3) The total fee is reasonable. (a) Except as provided in paragraph
(b) of this section, a practitioner shall
§ 11.106 Confidentiality of information. not represent a client if the representa-
tion involves a concurrent conflict of
(a) A practitioner shall not reveal in- interest. A concurrent conflict of inter-
formation relating to the representa- est exists if:
tion of a client unless the client gives (1) The representation of one client
informed consent, the disclosure is will be directly adverse to another cli-
impliedly authorized in order to carry ent; or
out the representation, the disclosure (2) There is a significant risk that
is permitted by paragraph (b) of this the representation of one or more cli-
section, or the disclosure is required by ents will be materially limited by the
paragraph (c) of this section. practitioner’s responsibilities to an-
(b) A practitioner may reveal infor- other client, a former client or a third
mation relating to the representation person or by a personal interest of the
of a client to the extent the practi- practitioner.
tioner reasonably believes necessary: (b) Notwithstanding the existence of
(1) To prevent reasonably certain a concurrent conflict of interest under
death or substantial bodily harm; paragraph (a) of this section, a practi-
(2) To prevent the client from engag- tioner may represent a client if:
ing in inequitable conduct before the (1) The practitioner reasonably be-
Office or from committing a crime or lieves that the practitioner will be able
fraud that is reasonably certain to re- to provide competent and diligent rep-
sult in substantial injury to the finan- resentation to each affected client;
cial interests or property of another (2) The representation is not prohib-
and in furtherance of which the client ited by law;
has used or is using the practitioner’s (3) The representation does not in-
services; volve the assertion of a claim by one
(3) To prevent, mitigate or rectify client against another client rep-
substantial injury to the financial in- resented by the practitioner in the
terests or property of another that is same litigation or other proceeding be-
reasonably certain to result or has re- fore a tribunal; and
sulted from the client’s commission of (4) Each affected client gives in-
a crime, fraud, or inequitable conduct formed consent, confirmed in writing.
before the Office in furtherance of
which the client has used the practi- § 11.108 Conflict of interest; Current
tioner’s services; clients; Specific rules.
(4) To secure legal advice about the (a) A practitioner shall not enter into
practitioner’s compliance with the a business transaction with a client or

USPTO Rules of Professional Conduct; knowingly acquire an ownership,
437
§ 11.108 37 CFR Ch. I (7–1–16 Edition)
possessory, security or other pecuniary (2) A practitioner representing an in-

interest adverse to a client unless: digent client may pay court costs and
(1) The transaction and terms on expenses of litigation or a proceeding
which the practitioner acquires the in- before the Office on behalf of the cli-
terest are fair and reasonable to the ent;
client and are fully disclosed and trans- (3) A practitioner may advance costs
mitted in writing in a manner that can and expenses in connection with a pro-
be reasonably understood by the client; ceeding before the Office provided the
(2) The client is advised in writing of client remains ultimately liable for
the desirability of seeking and is given such costs and expenses; and
a reasonable opportunity to seek the (4) A practitioner may also advance
advice of independent legal counsel in any fee required to prevent or remedy
the transaction; and an abandonment of a client’s applica-
(3) The client gives informed consent, tion by reason of an act or omission at-
in a writing signed by the client, to the tributable to the practitioner and not
essential terms of the transaction and to the client, whether or not the client
the practitioner’s role in the trans- is ultimately liable for such fee.
action, including whether the practi- (f) A practitioner shall not accept
tioner is representing the client in the compensation for representing a client
transaction. from one other than the client unless:
(b) A practitioner shall not use infor- (1) The client gives informed consent;
mation relating to representation of a (2) There is no interference with the
client to the disadvantage of the client practitioner’s independence of profes-
unless the client gives informed con- sional judgment or with the client-
sent, except as permitted or required practitioner relationship; and
by the USPTO Rules of Professional (3) Information relating to represen-
Conduct. tation of a client is protected as re-
(c) A practitioner shall not solicit quired by § 11.106.
any substantial gift from a client, in- (g) A practitioner who represents two
cluding a testamentary gift, or prepare or more clients shall not participate in
on behalf of a client an instrument giv- making an aggregate settlement of the
ing the practitioner or a person related claims of or against the clients, unless
to the practitioner any substantial gift
each client gives informed consent, in
unless the practitioner or other recipi-
a writing signed by the client. The
ent of the gift is related to the client.
practitioner’s disclosure shall include
For purposes of this paragraph, related
the existence and nature of all the
persons include a spouse, child, grand-
claims involved and of the participa-
child, parent, grandparent or other rel-
ative or individual with whom the tion of each person in the settlement.
practitioner or the client maintains a (h) A practitioner shall not:
close, familial relationship. (1) Make an agreement prospectively
(d) Prior to the conclusion of rep- limiting the practitioner’s liability to
resentation of a client, a practitioner a client for malpractice unless the cli-
shall not make or negotiate an agree- ent is independently represented in
ment giving the practitioner literary making the agreement; or
or media rights to a portrayal or ac- (2) Settle a claim or potential claim
count based in substantial part on infor such liability with an unrepre-
formation relating to the representa- sented client or former client unless
tion. that person is advised in writing of the
(e) A practitioner shall not provide desirability of seeking and is given a
financial assistance to a client in con- reasonable opportunity to seek the ad-
nection with pending or contemplated vice of independent legal counsel in
litigation or a proceeding before the connection therewith.
Office, except that: (i) A practitioner shall not acquire a
(1) A practitioner may advance court proprietary interest in the cause of ac-
costs and expenses of litigation, the re- tion, subject matter of litigation, or a
payment of which may be contingent proceeding before the Office which the
on the outcome of the matter; practitioner is conducting for a client,
438
except that the practitioner may, sub- permit or require with respect to a cli-
ject to the other provisions in this sec- ent.
tion:
(1) Acquire a lien authorized by law § 11.110 Imputation of conflicts of in-
to secure the practitioner’s fee or ex- terest; General rule.
penses; (a) While practitioners are associated
(2) Contract with a client for a rea- in a firm, none of them shall know-
sonable contingent fee in a civil case; ingly represent a client when any one
and of them practicing alone would be pro-
(3) In a patent case or a proceeding
hibited from doing so by §§ 11.107 or
before the Office, take an interest in
11.109, unless:
the patent or patent application as
part or all of his or her fee. (1) The prohibition is based on a per-
(j) [Reserved] sonal interest of the disqualified prac-
(k) While practitioners are associated titioner and does not present a signifi-
in a firm, a prohibition in paragraphs cant risk of materially limiting the
(a) through (i) of this section that ap- representation of the client by the re-
plies to any one of them shall apply to maining practitioners in the firm; or
all of them. (2) The prohibition is based upon
§ 11.109(a) or (b), and arises out of the
§ 11.109 Duties to former clients. disqualified practitioner’s association
(a) A practitioner who has formerly with a prior firm, and
represented a client in a matter shall (i) The disqualified practitioner is
not thereafter represent another per- timely screened from any participation
son in the same or a substantially rein the matter and is apportioned no
lated matter in which that person’s in- part of the fee therefrom; and
terests are materially adverse to the (ii) Written notice is promptly given
interests of the former client unless to any affected former client to enable
the former client gives informed con- the former client to ascertain compli-
sent, confirmed in writing. ance with the provisions of this sec-
(b) A practitioner shall not know-
tion, which shall include a description
ingly represent a person in the same or
of the screening procedures employed;
a substantially related matter in which
a firm with which the practitioner for- a statement of the firm’s and of the
merly was associated had previously screened practitioner’s compliance
represented a client: with the USPTO Rules of Professional
(1) Whose interests are materially ad- Conduct; a statement that review may
verse to that person; and be available before a tribunal; and an
(2) About whom the practitioner had agreement by the firm to respond
acquired information protected by promptly to any written inquiries or
§§ 11.106 and 11.109(c) that is material to objections by the former client about
the matter; unless the former client the screening procedures.
gives informed consent, confirmed in (b) When a practitioner has termi-
writing. nated an association with a firm, the
(c) A practitioner who has formerly firm is not prohibited from thereafter
represented a client in a matter or representing a person with interests
whose present or former firm has for- materially adverse to those of a client
merly represented a client in a matter represented by the formerly associated
shall not thereafter: practitioner and not currently rep-
(1) Use information relating to the resented by the firm, unless:
representation to the disadvantage of (1) The matter is the same or sub-
the former client except as the USPTO
stantially related to that in which the
Rules of Professional Conduct would
formerly associated practitioner rep-
permit or require with respect to a cli-
ent, or when the information has be- resented the client; and
come generally known; or (2) Any practitioner remaining in the
(2) Reveal information relating to the firm has information protected by
representation except as the USPTO §§ 11.106 and 11.109(c) that is material to

Rules of Professional Conduct would the matter.
439
§ 11.111 37 CFR Ch. I (7–1–16 Edition)
(c) A disqualification prescribed by in the matter and is apportioned no

this section may be waived by the af- part of the fee therefrom; and
fected client under the conditions stat- (2) Written notice is promptly given
ed in § 11.107. to the parties and any appropriate tri-
(d) The disqualification of practi- bunal to enable them to ascertain com-
tioners associated in a firm with pliance with the provisions of this sec-
former or current Federal Government tion.
lawyers is governed by § 11.111. (d) An arbitrator selected as a par-
tisan of a party in a multimember arbi-
§ 11.111 Former or current Federal tration panel is not prohibited from
Government employees. subsequently representing that party.
A practitioner who is a former or
current Federal Government employee § 11.113 Organization as client.
shall not engage in any conduct which (a) A practitioner employed or re-
is contrary to applicable Federal ethics tained by an organization represents
law, including conflict of interest stat- the organization acting through its
utes and regulations of the depart- duly authorized constituents.
ment, agency or commission formerly (b) If a practitioner for an organiza-
or currently employing said practi- tion knows that an officer, employee or
tioner. other person associated with the orga-
nization is engaged in action, intends
§ 11.112 Former judge, arbitrator, me- to act or refuses to act in a matter re-
diator or other third-party neutral. lated to the representation that is a
(a) Except as stated in paragraph (d) violation of a legal obligation to the
of this section, a practitioner shall not organization, or a violation of law that
represent anyone in connection with a reasonably might be imputed to the or-
matter in which the practitioner par- ganization, and that is likely to result
ticipated personally and substantially in substantial injury to the organiza-
as a judge or other adjudicative officer tion, then the practitioner shall pro-
or law clerk to such a person or as an ceed as is reasonably necessary in the
arbitrator, mediator or other third- best interest of the organization. Un-
party neutral, unless all parties to the less the practitioner reasonably be-
proceeding give informed consent, con- lieves that it is not necessary in the
firmed in writing. best interest of the organization to do
(b) A practitioner shall not negotiate so, the practitioner shall refer the mat-
for employment with any person who is ter to higher authority in the organiza-
involved as a party or as practitioner tion, including, if warranted by the cir-
for a party in a matter in which the cumstances, to the highest authority
practitioner is participating personally that can act on behalf of the organiza-
and substantially as a judge or other tion as determined by applicable law.
adjudicative officer or as an arbitrator, (c) Except as provided in paragraph
mediator or other third-party neutral. (d) of this section, if
A practitioner serving as a law clerk to (1) Despite the practitioner’s efforts
a judge or other adjudicative officer in accordance with paragraph (b) of
may negotiate for employment with a this section the highest authority that
party or practitioner involved in a can act on behalf of the organization
matter in which the clerk is partici- insists upon or fails to address in a
pating personally and substantially, timely and appropriate manner an ac-
but only after the practitioner has no- tion, or a refusal to act, that is clearly
tified the judge, or other adjudicative a violation of law, and
officer. (2) The practitioner reasonably be-
(c) If a practitioner is disqualified by lieves that the violation is reasonably
paragraph (a) of this section, no practi- certain to result in substantial injury
tioner in a firm with which that practi- to the organization, then the practi-
tioner is associated may knowingly un- tioner may reveal information relating
dertake or continue representation in to the representation whether or not
the matter unless: § 11.106 permits such disclosure, but
(1) The disqualified practitioner is only if and to the extent the practi-
timely screened from any participation tioner reasonably believes necessary to
440
prevent substantial injury to the orga- (b) When the practitioner reasonably
nization. believes that the client has diminished
(d) Paragraph (c) of this section shall capacity, is at risk of substantial phys-
not apply with respect to information ical, financial or other harm unless ac-
relating to a practitioner’s representation is taken and cannot adequately
tion of an organization to investigate act in the client’s own interest, the
an alleged violation of law, or to defend practitioner may take reasonably nec-
the organization or an officer, em- essary protective action, including
ployee or other constituent associated consulting with individuals or entities
with the organization against a claim that have the ability to take action to
arising out of an alleged violation of protect the client and, in appropriate
law. cases, seeking the appointment of a
(e) A practitioner who reasonably be- guardian ad litem, conservator or
lieves that he or she has been dis- guardian.
charged because of the practitioner’s (c) Information relating to the rep-
actions taken pursuant to paragraphs resentation of a client with diminished
(b) or (c) of this section, or who with- capacity is protected under § 11.106.
draws under circumstances that re- When taking protective action pursu-
quire or permit the practitioner to ant to paragraph (b) of this section, the
take action under either of those para- practitioner is impliedly authorized
graphs, shall proceed as the practi- under § 11.106(a) to reveal information
tioner reasonably believes necessary to about the client, but only to the extent
assure that the organization’s highest reasonably necessary to protect the cli-
authority is informed of the practi- ent’s interests.
tioner’s discharge or withdrawal.
(f) In dealing with an organization’s § 11.115 Safekeeping property.
directors, officers, employees, mem- (a) A practitioner shall hold property
bers, shareholders, or other constitu- of clients or third persons that is in a
ents, a practitioner shall explain the practitioner’s possession in connection
identity of the client when the practi- with a representation separate from
tioner knows or reasonably should the practitioner’s own property. Funds
know that the organization’s interests shall be kept in a separate account
are adverse to those of the constituents maintained in the state where the
with whom the practitioner is dealing. practitioner’s office is situated, or else-
(g) A practitioner representing an or- where with the consent of the client or
ganization may also represent any of third person. Where the practitioner’s
its directors, officers, employees, mem- office is situated in a foreign country,
bers, shareholders or other constitu- funds shall be kept in a separate ac-
ents, subject to the provisions of count maintained in that foreign coun-
§ 11.107. If the organization’s consent to try or elsewhere with the consent of
the dual representation is required by the client or third person. Other prop-
§ 11.107, the consent shall be given by erty shall be identified as such and ap-
an appropriate official of the organiza- propriately safeguarded. Complete
tion other than the individual who is records of such account funds and
to be represented, or by the share- other property shall be kept by the
holders. practitioner and shall be preserved for
a period of five years after termination
§ 11.114 Client with diminished capac- of the representation.
ity. (b) A practitioner may deposit the
(a) When a client’s capacity to make practitioner’s own funds in a client
adequately considered decisions in con- trust account for the sole purpose of
nection with a representation is dimin- paying bank service charges on that
ished, whether because of minority, account, but only in an amount nec-
mental impairment or for some other essary for that purpose.
reason, the practitioner shall, as far as (c) A practitioner shall deposit into a
reasonably possible, maintain a normal client trust account legal fees and ex-
client-practitioner relationship with penses that have been paid in advance,

the client. to be withdrawn by the practitioner
441
§ 11.115 37 CFR Ch. I (7–1–16 Edition)
only as fees are earned or expenses in- (vi) Copies of records showing dis-
curred. bursements on behalf of clients;
(d) Upon receiving funds or other (vii) The physical or electronic
property in which a client or third per- equivalents of all checkbook registers,
son has an interest, a practitioner shall bank statements, records of deposit,
promptly notify the client or third per- pre-numbered canceled checks, and
son. Except as stated in this section or substitute checks provided by a finan-
otherwise permitted by law or by cial institution;
agreement with the client, a practi- (viii) Records of all electronic trans-
tioner shall promptly deliver to the cli- fers from client trust accounts, includ-
ent or third person any funds or other ing the name of the person authorizing
property that the client or third person transfer, the date of transfer, the name
is entitled to receive and, upon request of the recipient and confirmation from
by the client or third person, shall the financial institution of the trust
promptly render a full accounting re-
account number from which money was
garding such property.
withdrawn and the date and the time
(e) When in the course of representa-
the transfer was completed;
tion a practitioner is in possession of
(ix) Copies of monthly trial balances
property in which two or more persons
(one of whom may be the practitioner) and quarterly reconciliations of the
claim interests, the property shall be client trust accounts maintained by
kept separate by the practitioner until the practitioner; and
the dispute is resolved. The practi- (x) Copies of those portions of client
tioner shall promptly distribute all files that are reasonably related to cli-
portions of the property as to which ent trust account transactions.
the interests are not in dispute. (2) Client trust account safeguards.
(f) All separate accounts for clients With respect to client trust accounts
or third persons kept by a practitioner required by paragraphs (a) through (e)
must also comply with the following of this section:
provisions: (i) Only a practitioner or a person
(1) Required records. The records to be under the direct supervision of the
kept include: practitioner shall be an authorized sig-
(i) Receipt and disbursement journals natory or authorize transfers from a
containing a record of deposits to and client trust account;
withdrawals from client trust ac- (ii) Receipts shall be deposited intact
counts, specifically identifying the and records of deposit should be suffi-
date, source, and description of each ciently detailed to identify each item;
item deposited, as well as the date, and
payee and purpose of each disburse- (iii) Withdrawals shall be made only
ment; by check payable to a named payee and
(ii) Ledger records for all client trust not to cash, or by authorized electronic
accounts showing, for each separate transfer.
trust client or beneficiary, the source
(3) Availability of records. Records re-
of all funds deposited, the names of all
quired by paragraph (f)(1) of this sec-
persons for whom the funds are or were
held, the amount of such funds, the de- tion may be maintained by electronic,
scriptions and amounts of charges or photographic, or other media provided
withdrawals, and the names of all per- that they otherwise comply with para-
sons or entities to whom such funds graphs (f)(1) and (f)(2) of this section
were disbursed; and that printed copies can be pro-
(iii) Copies of retainer and compensa- duced. These records shall be readily
tion agreements with clients; accessible to the practitioner.
(iv) Copies of accountings to clients (4) Lawyers. The records kept by a
or third persons showing the disburse- lawyer are deemed to be in compliance
ment of funds to them or on their be- with this section if the types of records
half; that are maintained meet the record-
(v) Copies of bills for legal fees and keeping requirements of a state in
expenses rendered to clients; which the lawyer is licensed and in
442
good standing, the recordkeeping re- that the practitioner will withdraw un-
quirements of the state where the law- less the obligation is fulfilled;
yer’s principal place of business is lo- (6) The representation will result in
cated, or the recordkeeping require- an unreasonable financial burden on
ments of this section. the practitioner or has been rendered
(5) Patent agents and persons granted unreasonably difficult by the client; or
limited recognition who are employed in (7) Other good cause for withdrawal
the United States by a law firm. The exists.
records kept by a law firm employing (c) A practitioner must comply with
one or more registered patent agents or applicable law requiring notice to or
persons granted limited recognition permission of a tribunal when termi-
under § 11.9 are deemed to be in compli- nating a representation. When ordered
ance with this section if the types of to do so by a tribunal, a practitioner
records that are maintained meet the shall continue representation notwith-
recordkeeping requirements of the standing good cause for terminating
state where at least one practitioner of the representation.
the law firm is licensed and in good (d) Upon termination of representa-
standing, the recordkeeping require- tion, a practitioner shall take steps to
ments of the state where the law firm’s the extent reasonably practicable to
principal place of business is located, protect a client’s interests, such as giv-
or the recordkeeping requirements of ing reasonable notice to the client, al-
this section. lowing time for employment of other
counsel, surrendering papers and prop-
§ 11.116 Declining or terminating rep-
resentation. erty to which the client is entitled and
refunding any advance payment of fee
(a) Except as stated in paragraph (c) or expense that has not been earned or
of this section, a practitioner shall not incurred. The practitioner may retain
represent a client, or where representa- papers relating to the client to the ex-
tion has commenced, shall withdraw tent permitted by other law.
from the representation of a client if:
(1) The representation will result in § 11.117 Sale of law practice.
violation of the USPTO Rules of Pro-
fessional Conduct or other law; A practitioner or a law firm may sell
(2) The practitioner’s physical or or purchase a law practice, or an area
mental condition materially impairs of law practice, including good will, if
the practitioner’s ability to represent the following conditions are satisfied:
the client; or (a) The seller ceases to engage in the
(3) The practitioner is discharged. private practice of law, or in the area
(b) Except as stated in paragraph (c) of practice that has been sold, in a geo-
of this section, a practitioner may graphic area in which the practice has
withdraw from representing a client if: been conducted;
(1) Withdrawal can be accomplished (b)(1) Except as provided in para-
without material adverse effect on the graph (b)(2) of this section, the entire
interests of the client; practice, or the entire area of practice,
(2) The client persists in a course of is sold to one or more lawyers or law
action involving the practitioner’s firms;
services that the practitioner reason- (2) To the extent the practice or the
ably believes is criminal or fraudulent; area of practice involves patent pro-
(3) The client has used the practi- ceedings before the Office, that prac-
tioner’s services to perpetrate a crime tice or area of practice may be sold
or fraud; only to one or more registered practi-
(4) A client insists upon taking ac- tioners or law firms that include at
tion that the practitioner considers re- least one registered practitioner;
pugnant or with which the practitioner (c)(1) The seller gives written notice
has a fundamental disagreement; to each of the seller’s clients regarding:
(5) The client fails substantially to (i) The proposed sale;
fulfill an obligation to the practitioner (ii) The client’s right to retain other
regarding the practitioner’s services counsel or to take possession of the

and has been given reasonable warning file; and
443
§ 11.118 37 CFR Ch. I (7–1–16 Edition)
(iii) The fact that the client’s con- to avoid exposure to more disqualifying
sent to the transfer of the client’s files information than was reasonably nec-
will be presumed if the client does not essary to determine whether to rep-
take any action or does not otherwise resent the prospective client; and
object within ninety (90) days after re- (i) The disqualified practitioner is
ceipt of the notice. timely screened from any participation
(2) If a client cannot be given notice, in the matter and is apportioned no
the representation of that client may part of the fee therefrom; and
be transferred to the purchaser only (ii) Written notice is promptly given
upon entry of an order so authorizing to the prospective client.
by a court having jurisdiction. The
seller may disclose to the court in cam- §§ 11.119–11.200 [Reserved]
era information relating to the rep- COUNSELOR
resentation only to the extent nec-
essary to obtain an order authorizing § 11.201 Advisor.
the transfer of a file; and
In representing a client, a practi-
(d) The fees charged clients shall not
tioner shall exercise independent pro-
be increased by reason of the sale.
fessional judgment and render candid
§ 11.118 Duties to prospective client. advice. In rendering advice, a practi-
tioner may refer not only to law but to
(a) A person who discusses with a other considerations such as moral,
practitioner the possibility of forming economic, social and political factors
a client-practitioner relationship with that may be relevant to the client’s
respect to a matter is a prospective cli- situation.
ent.
(b) Even when no client-practitioner § 11.202 [Reserved]
relationship ensues, a practitioner who
has had discussions with the prospec- § 11.203 Evaluation for use by third
tive client shall not use or reveal infor- persons.
mation learned in the consultation, ex- (a) A practitioner may provide an
cept as § 11.109 would permit with re- evaluation of a matter affecting a cli-
spect to information of a former client. ent for the use of someone other than
(c) A practitioner subject to para- the client if the practitioner reason-
graph (b) of this section shall not rep- ably believes that making the evalua-
resent a client with interests materi- tion is compatible with other aspects
ally adverse to those of a prospective of the practitioner’s relationship with
client in the same or a substantially the client.
related matter if the practitioner re- (b) When the practitioner knows or
ceived information from the prospec- reasonably should know that the eval-
tive client that could be significantly uation is likely to affect the client’s
harmful to that person in the matter, interests materially and adversely, the
except as provided in paragraph (d) of practitioner shall not provide the eval-
this section. If a practitioner is dis- uation unless the client gives informed
qualified from representation under consent.
this paragraph, no practitioner in a (c) Except as disclosure is authorized
firm with which that practitioner is as- in connection with a report of an eval-
sociated may knowingly undertake or uation, information relating to the
continue representation in such a mat- evaluation is otherwise protected by
ter, except as provided in paragraph (d) § 11.106.
of this section.
(d) When the practitioner has re- § 11.204 Practitioner serving as third-
ceived disqualifying information as de- party neutral.
fined in paragraph (c) of this section, (a) A practitioner serves as a third-
representation is permissible if: party neutral when the practitioner as-
(1) Both the affected client and the sists two or more persons who are not
prospective client have given informed clients of the practitioner to reach a
consent, confirmed in writing; or resolution of a dispute or other matter
(2) The practitioner who received the that has arisen between them. Service
information took reasonable measures as a third-party neutral may include
444
service as an arbitrator, a mediator or offered material evidence and the prac-

in such other capacity as will enable titioner comes to know of its falsity,
the practitioner to assist the parties to the practitioner shall take reasonable
resolve the matter. remedial measures, including, if nec-
(b) A practitioner serving as a third- essary, disclosure to the tribunal. A
party neutral shall inform unrepre- practitioner may refuse to offer evi-
sented parties that the practitioner is dence that the practitioner reasonably
not representing them. When the prac- believes is false.
titioner knows or reasonably should (b) A practitioner who represents a
know that a party does not understand client in a proceeding before a tribunal
the practitioner’s role in the matter, and who knows that a person intends
the practitioner shall explain the dif- to engage, is engaging or has engaged
ference between the practitioner’s role in criminal or fraudulent conduct re-
as a third-party neutral and a practi-
lated to the proceeding shall take rea-
tioner’s role as one who represents a
sonable remedial measures, including,
client.
if necessary, disclosure to the tribunal.
§§ 11.205–11.300 [Reserved] (c) The duties stated in paragraphs
(a) and (b) of this section continue to
ADVOCATE the conclusion of the proceeding, and
apply even if compliance requires dis-
§ 11.301 Meritorious claims and con- closure of information otherwise pro-
tentions. tected by § 11.106.
A practitioner shall not bring or de- (d) In an ex parte proceeding, a practi-
fend a proceeding, or assert or con- tioner shall inform the tribunal of all
trovert an issue therein, unless there is material facts known to the practi-
a basis in law and fact for doing so that tioner that will enable the tribunal to
is not frivolous, which includes a good- make an informed decision, whether or
faith argument for an extension, modi- not the facts are adverse.
fication or reversal of existing law. (e) In a proceeding before the Office,
a practitioner shall disclose to the Of-
§ 11.302 Expediting proceedings.
fice information necessary to comply
A practitioner shall make reasonable with applicable duty of disclosure pro-
efforts to expedite proceedings before a visions.
tribunal consistent with the interests
of the client. § 11.304 Fairness to opposing party
and counsel.
§ 11.303 Candor toward the tribunal.
A practitioner shall not:
(a) A practitioner shall not know- (a) Unlawfully obstruct another par-
ingly: ty’s access to evidence or unlawfully
(1) Make a false statement of fact or
alter, destroy or conceal a document or
law to a tribunal or fail to correct a
other material having potential evi-
false statement of material fact or law
dentiary value. A practitioner shall not
previously made to the tribunal by the
counsel or assist another person to do
practitioner;
any such act;
(2) Fail to disclose to the tribunal
legal authority in the controlling juris- (b) Falsify evidence, counsel or assist
diction known to the practitioner to be a witness to testify falsely, or offer an
directly adverse to the position of the inducement to a witness that is prohib-
client and not disclosed by opposing ited by law;
counsel in an inter partes proceeding, or (c) Knowingly disobey an obligation
fail to disclose such authority in an ex under the rules of a tribunal except for
parte proceeding before the Office if an open refusal based on an assertion
such authority is not otherwise dis- that no valid obligation exists;
closed; or (d) Make a frivolous discovery re-
(3) Offer evidence that the practi- quest or fail to make a reasonably dili-
tioner knows to be false. If a practi- gent effort to comply with a legally
tioner, the practitioner’s client, or a proper discovery request by an oppos-

witness called by the practitioner, has ing party;
445
§ 11.305 37 CFR Ch. I (7–1–16 Edition)
(e) In a proceeding before a tribunal, (2) Information contained in a public

allude to any matter that the practi- record;
tioner does not reasonably believe is (3) That an investigation of a matter
relevant or that will not be supported is in progress;
by admissible evidence, assert personal (4) The scheduling or result of any
knowledge of facts in issue except when step in litigation;
testifying as a witness, or state a per- (5) A request for assistance in obtain-
sonal opinion as to the justness of a
ing evidence and information necessary
cause, the credibility of a witness, the
thereto; and
culpability of a civil litigant or the
guilt or innocence of an accused; or (6) A warning of danger concerning
the behavior of a person involved, when
(f) Request a person other than a cli-
ent to refrain from voluntarily giving there is reason to believe that there ex-
relevant information to another party ists the likelihood of substantial harm
unless: to an individual or to the public inter-
(1) The person is a relative or an em- est.
ployee or other agent of a client; and (c) Notwithstanding paragraph (a) of
(2) The practitioner reasonably be- this section, a practitioner may make
lieves that the person’s interests will a statement that a reasonable practi-
not be adversely affected by refraining tioner would believe is required to pro-
from giving such information. tect a client from the substantial
undue prejudicial effect of recent pub-
§ 11.305 Impartiality and decorum of licity not initiated by the practitioner
the tribunal. or the practitioner’s client. A state-
A practitioner shall not: ment made pursuant to this paragraph
(a) Seek to influence a judge, hearing shall be limited to such information as
officer, administrative law judge, ad- is necessary to mitigate the recent ad-
ministrative patent judge, administra- verse publicity.
tive trademark judge, juror, prospec- (d) No practitioner associated in a
tive juror, employee or officer of the firm or government agency with a
Office, or other official by means pro- practitioner subject to paragraph (a) of
hibited by law; this section shall make a statement
(b) Communicate ex parte with such a prohibited by paragraph (a).
person during the proceeding unless au-
thorized to do so by law, rule or court § 11.307 Practitioner as witness.
order; or
(a) A practitioner shall not act as ad-
(c) [Reserved] vocate at a proceeding before a tri-
(d) Engage in conduct intended to bunal in which the practitioner is like-
disrupt any proceeding before a tri-
ly to be a necessary witness unless:
bunal.
(1) The testimony relates to an
§ 11.306 Trial publicity. uncontested issue;
(2) The testimony relates to the na-
(a) A practitioner who is partici-
ture and value of legal services ren-
pating or has participated in the inves-
dered in the case; or
tigation or litigation of a matter shall
not make an extrajudicial statement (3) Disqualification of the practi-
that the practitioner knows or reason- tioner would work substantial hardship
ably should know will be disseminated on the client.
by means of public communication and (b) A practitioner may act as advo-
will have a substantial likelihood of cate in a proceeding before a tribunal
materially prejudicing an adjudicative in which another practitioner in the
proceeding in the matter. practitioner’s firm is likely to be
(b) Notwithstanding paragraph (a) of called as a witness unless precluded
this section, a practitioner may state: from doing so by §§ 11.107 or 11.109.
(1) The claim, offense or defense in-
volved and, except when prohibited by
law, the identity of the persons in-

volved;
446
§ 11.308 [Reserved] § 11.403 Dealing with unrepresented

person.
§ 11.309 Advocate in nonadjudicative
In dealing on behalf of a client with
proceedings.
a person who is not represented by a
A practitioner representing a client practitioner, a practitioner shall not
before a legislative body or administra- state or imply that the practitioner is
tive agency in a nonadjudicative pro- disinterested. When the practitioner
ceeding shall disclose that the appear- knows or reasonably should know that
ance is in a representative capacity the unrepresented person misunder-
and shall conform to the provisions of stands the practitioner’s role in the
§§ 11.303(a) through (c), 11.304(a) matter, the practitioner shall make
through (c), and 11.305. reasonable efforts to correct the mis-
understanding. The practitioner shall
§§ 11.310—11.400 [Reserved] not give legal advice to an unrepre-
sented person, other than the advice to
TRANSACTIONS WITH PERSONS OTHER
secure counsel, if the practitioner
THAN CLIENTS
knows or reasonably should know that
§ 11.401 Truthfulness in statements to the interests of such a person are or
others. have a reasonable possibility of being
in conflict with the interests of the cli-
In the course of representing a client,
ent.
a practitioner shall not knowingly:
(a) Make a false statement of mate- § 11.404 Respect for rights of third per-
rial fact or law to a third person; or sons.
(b) Fail to disclose a material fact to (a) In representing a client, a practi-
a third person when disclosure is nec- tioner shall not use means that have
essary to avoid assisting a criminal or no substantial purpose other than to
fraudulent act by a client, unless dis- embarrass, delay, or burden a third
closure is prohibited by § 11.106. person, or use methods of obtaining
evidence that violate the legal rights
§ 11.402 Communication with person
represented by a practitioner. of such a person.
(b) A practitioner who receives a doc-
(a) In representing a client, a practi- ument or electronically stored infor-
tioner shall not communicate about mation relating to the representation
the subject of the representation with of the practitioner’s client and knows
a person the practitioner knows to be or reasonably should know that the
represented by another practitioner in document or electronically stored in-
the matter, unless the practitioner has formation was inadvertently sent shall
the consent of the other practitioner or promptly notify the sender.
is authorized to do so by law, rule, or a
court order. §§ 11.405—11.500 [Reserved]
(b) This section does not prohibit
communication by a practitioner with LAW FIRMS AND ASSOCIATIONS
government officials who are otherwise
§ 11.501 Responsibilities of partners,
represented by counsel and who have
managers, and supervisory practi-
the authority to redress the grievances tioners.
of the practitioner’s client, provided
that, if the communication relates to a (a) A practitioner who is a partner in
matter for which the government offi- a law firm, and a practitioner who indi-
cial is represented, then prior to the vidually or together with other practi-
communication the practitioner must tioners possesses comparable manage-
disclose to such government official rial authority in a law firm, shall make
both the practitioner’s identity and the reasonable efforts to ensure that the
fact that the practitioner represents a firm has in effect measures giving rea-
sonable assurance that all practi-
party with a claim against the govern-

ment. tioners in the firm conform to the
USPTO Rules of Professional Conduct.
447
§ 11.502 37 CFR Ch. I (7–1–16 Edition)
(b) A practitioner having direct su- (c) A practitioner shall be responsible

pervisory authority over another prac- for conduct of such a person that would
titioner shall make reasonable efforts be a violation of the USPTO Rules of
to ensure that the other practitioner Professional Conduct if engaged in by a
conforms to the USPTO Rules of Pro- practitioner if:
fessional Conduct. (1) The practitioner orders or, with
(c) A practitioner shall be responsible the knowledge of the specific conduct,
for another practitioner’s violation of ratifies the conduct involved; or
the USPTO Rules of Professional Con- (2) The practitioner is a partner or
duct if: has comparable managerial authority
(1) The practitioner orders or, with in the law firm in which the person is
knowledge of the specific conduct, rati- employed, or has direct supervisory au-
fies the conduct involved; or thority over the person, and knows of
(2) The practitioner is a partner or the conduct at a time when its con-
has comparable managerial authority sequences can be avoided or mitigated
in the law firm in which the other but fails to take reasonable remedial
practitioner practices, or has direct su- action.
pervisory authority over the other
practitioner, and knows of the conduct § 11.504 Professional independence of
at a time when its consequences can be a practitioner.
avoided or mitigated but fails to take (a) A practitioner or law firm shall
reasonable remedial action. not share legal fees with a non-practi-
tioner, except that:
§ 11.502 Responsibilities of a subordi- (1) An agreement by a practitioner
nate practitioner. with the practitioner’s firm, partner,
(a) A practitioner is bound by the or associate may provide for the pay-
USPTO Rules of Professional Conduct ment of money, over a reasonable pe-
notwithstanding that the practitioner riod of time after the practitioner’s
acted at the direction of another per- death, to the practitioner’s estate or to
son. one or more specified persons;
(b) A subordinate practitioner does (2) A practitioner who purchases the
not violate the USPTO Rules of Profes- practice of a deceased, disabled, or dis-
sional Conduct if that practitioner acts appeared practitioner may, pursuant to
in accordance with a supervisory prac- the provisions of § 11.117, pay to the es-
titioner’s reasonable resolution of an tate or other representative of that
arguable question of professional duty. practitioner the agreed-upon purchase
price;
§ 11.503 Responsibilities regarding (3) A practitioner or law firm may in-
non-practitioner assistance. clude non-practitioner employees in a
With respect to a non-practitioner compensation or retirement plan, even
assistant employed or retained by or though the plan is based in whole or in
associated with a practitioner: part on a profit-sharing arrangement;
(a) A practitioner who is a partner, and
and a practitioner who individually or (4) A practitioner may share legal
together with other practitioners pos- fees, whether awarded by a tribunal or
sesses comparable managerial author- received in settlement of a matter,
ity in a law firm shall make reasonable with a nonprofit organization that em-
efforts to ensure that the firm has in ployed, retained or recommended em-
effect measures giving reasonable as- ployment of the practitioner in the
surance that the person’s conduct is matter and that qualifies under Sec-
compatible with the professional obli- tion 501(c)(3) of the Internal Revenue
gations of the practitioner; Code.
(b) A practitioner having direct su- (b) A practitioner shall not form a
pervisory authority over the non-prac- partnership with a non-practitioner if
titioner assistant shall make reason- any of the activities of the partnership
able efforts to ensure that the person’s consist of the practice of law.
conduct is compatible with the profes- (c) A practitioner shall not permit a
sional obligations of the practitioner; person who recommends, employs, or

and pays the practitioner to render legal
448
services for another to direct or regu- dividually or with others if the practi-
late the practitioner’s professional tioner fails to take reasonable meas-
judgment in rendering such legal serv- ures to assure that a person obtaining
ices. the law-related services knows that the
(d) A practitioner shall not practice services are not legal services and that
with or in the form of a professional the protections of the client-practi-
corporation or association authorized tioner relationship do not exist.
to practice law for a profit, if:
(1) A non-practitioner owns any in- §§ 11.508—11.700 [Reserved]
terest therein, except that a fiduciary
representative of the estate of a practi- INFORMATION ABOUT LEGAL SERVICES
tioner may hold the stock or interest
of the practitioner for a reasonable § 11.701 Communications concerning a
time during administration; practitioner’s services.
(2) A non-practitioner is a corporate A practitioner shall not make a false
director or officer thereof or occupies or misleading communication about
the position of similar responsibility in the practitioner or the practitioner’s
any form of association other than a services. A communication is false or
corporation; or misleading if it contains a material
(3) A non-practitioner has the right misrepresentation of fact or law, or
to direct or control the professional omits a fact necessary to make the
judgment of a practitioner. statement considered as a whole not
§ 11.505 Unauthorized practice of law. materially misleading.
A practitioner shall not practice law § 11.702 Advertising.
in a jurisdiction in violation of the reg-
ulation of the legal profession in that (a) Subject to the requirements of
jurisdiction, or assist another in doing §§ 11.701 and 11.703, a practitioner may
so. advertise services through written, re-
corded or electronic communication,
§ 11.506 Restrictions on right to prac- including public media.
tice. (b) A practitioner shall not give any-
A practitioner shall not participate thing of value to a person for recom-
in offering or making: mending the practitioner’s services ex-
(a) A partnership, shareholders, oper- cept that a practitioner may:
ating, employment, or other similar (1) Pay the reasonable costs of adver-
type of agreement that restricts the tisements or communications per-
right of a practitioner to practice after mitted by this section;
termination of the relationship, except (2) [Reserved]
an agreement concerning benefits upon (3) Pay for a law practice in accord-
retirement; or ance with § 11.117; and
(b) An agreement in which a restric- (4) Refer clients to another practi-
tion on the practitioner’s right to prac-
tioner or a non-practitioner profes-
tice is part of the settlement of a client
sional pursuant to an agreement not
controversy.
otherwise prohibited under the USPTO
§ 11.507 Responsibilities regarding Rules of Professional Conduct that pro-
law-related services. vides for the other person to refer cli-
A practitioner shall be subject to the ents or customers to the practitioner,
USPTO Rules of Professional Conduct if:
with respect to the provision of law-re- (i) The reciprocal referral agreement
lated services if the law-related serv- is not exclusive, and
ices are provided: (ii) The client is informed of the ex-
(a) By the practitioner in cir- istence and nature of the agreement.
cumstances that are not distinct from (c) Any communication made pursu-
the practitioner’s provision of legal ant to this section shall include the
services to clients; or name and office address of at least one
(b) In other circumstances by an en- practitioner or law firm responsible for

tity controlled by the practitioner in- its content.
449
§ 11.703 37 CFR Ch. I (7–1–16 Edition)
§ 11.703 Direct contact with prospec- (b) A registered practitioner who is

tive clients. an attorney may use the designation
(a) A practitioner shall not by in-per- ‘‘Patents,’’ ‘‘Patent Attorney,’’ ‘‘Pat-
son, live telephone or real-time elec- ent Lawyer,’’ ‘‘Registered Patent At-
tronic contact solicit professional em- torney,’’ or a substantially similar des-
ployment from a prospective client ignation. A registered practitioner who
when a significant motive for the prac- is not an attorney may use the des-
titioner’s doing so is the practitioner’s ignation ‘‘Patents,’’ ‘‘Patent Agent,’’
pecuniary gain, unless the person con- ‘‘Registered Patent Agent,’’ or a sub-
tacted: stantially similar designation. Unless
(1) Is a practitioner; or authorized by § 11.14(b), a registered
(2) Has a family, close personal, or patent agent shall not hold himself or
prior professional relationship with the herself out as being qualified or au-
practitioner. thorized to practice before the Office in
(b) A practitioner shall not solicit trademark matters or before a court.
professional employment from a pro- (c) [Reserved]
spective client by written, recorded or (d) A practitioner shall not state or
electronic communication or by in-per- imply that a practitioner is certified as
son, telephone or real-time electronic a specialist in a particular field of law,
contact even when not otherwise pro- unless:
hibited by paragraph (a) of this section, (1) The practitioner has been cer-
if:
tified as a specialist by an organization
(1) The prospective client has made
that has been approved by an appro-
known to the practitioner a desire not
priate state authority or that has been
to be solicited by the practitioner; or
accredited by the American Bar Asso-
(2) The solicitation involves coercion,
ciation; and
duress or harassment.
(2) The name of the certifying organi-
(c) Every written, recorded or elec-
tronic communication from a practi- zation is clearly identified in the com-
tioner soliciting professional employ- munication.
ment from a prospective client known (e) An individual granted limited rec-
to be in need of legal services in a par- ognition under § 11.9 may use the des-
ticular matter shall include the words ignation ‘‘Limited Recognition.’’
‘‘Advertising Material’’ on the outside
envelope, if any, and at the beginning § 11.705 Firm names and letterheads.
and ending of any recorded or elec- (a) A practitioner shall not use a firm
tronic communication, unless the re- name, letterhead or other professional
cipient of the communication is a per- designation that violates § 11.701. A
son specified in paragraphs (a)(1) or trade name may be used by a practi-
(a)(2) of this section. tioner in private practice if it does not
(d) Notwithstanding the prohibitions imply a connection with a government
in paragraph (a) of this section, a prac- agency or with a public or charitable
titioner may participate with a prepaid legal services organization and is not
or group legal service plan operated by otherwise in violation of § 11.701.
an organization not owned or directed
(b) [Reserved]
by the practitioner that uses in-person
(c) The name of a practitioner hold-
or telephone contact to solicit mem-
berships or subscriptions for the plan ing a public office shall not be used in
from persons who are not known to the name of a law firm, or in commu-
need legal services in a particular mat- nications on its behalf, during any sub-
ter covered by the plan. stantial period in which the practi-
tioner is not actively and regularly
§ 11.704 Communication of fields of practicing with the firm.
practice and specialization.
(a) A practitioner may communicate
the fact that the practitioner does or
does not practice in particular fields of

law.
450
§§ 11.706–11.800 [Reserved] or administrative trademark judge has

committed a violation of applicable
MAINTAINING THE INTEGRITY OF THE rules of judicial conduct that raises a
PROFESSION substantial question as to the individ-
ual’s fitness for office shall inform the
§ 11.801 Registration, recognition and
disciplinary matters. appropriate authority.
(c) The provisions of this section do
An applicant for registration or rec-
not require disclosure of information
ognition to practice before the Office,
otherwise protected by § 11.106 or infor-
or a practitioner in connection with an
mation gained while participating in
application for registration or recogni-
tion, or a practitioner in connection an approved lawyers assistance pro-
with a disciplinary or reinstatement gram.
matter, shall not:
§ 11.804 Misconduct.
(a) Knowingly make a false state-
ment of material fact; or It is professional misconduct for a
(b) Fail to disclose a fact necessary practitioner to:
to correct a misapprehension known by (a) Violate or attempt to violate the
the person to have arisen in the mat- USPTO Rules of Professional Conduct,
ter, fail to cooperate with the Office of knowingly assist or induce another to
Enrollment and Discipline in an inves- do so, or do so through the acts of an-
tigation of any matter before it, or other;
knowingly fail to respond to a lawful (b) Commit a criminal act that re-
demand or request for information flects adversely on the practitioner’s
from an admissions or disciplinary au- honesty, trustworthiness or fitness as a
thority, except that the provisions of
practitioner in other respects;
this section do not require disclosure of
information otherwise protected by (c) Engage in conduct involving dis-
§ 11.106. honesty, fraud, deceit or misrepresen-
tation;
§ 11.802 Judicial and legal officials. (d) Engage in conduct that is preju-
(a) A practitioner shall not make a dicial to the administration of justice;
statement that the practitioner knows (e) State or imply an ability to influ-
to be false or with reckless disregard as ence improperly a government agency
to its truth or falsity concerning the or official or to achieve results by
qualifications or integrity of a judge, means that violate the USPTO Rules of
adjudicatory officer or public legal offi- Professional Conduct or other law;
cer, or of a candidate for election or ap- (f) Knowingly assist a judge, hearing
pointment to judicial or legal office. officer, administrative law judge, ad-
(b) A practitioner who is a candidate ministrative patent judge, administra-
for judicial office shall comply with tive trademark judge, or judicial offi-
the applicable provisions of the Code of cer in conduct that is a violation of ap-
Judicial Conduct. plicable rules of judicial conduct or
other law;
§ 11.803 Reporting professional mis-
conduct. (g) Knowingly assist an officer or em-
ployee of the Office in conduct that is
(a) A practitioner who knows that a violation of applicable rules of con-
another practitioner has committed a duct or other law;
violation of the USPTO Rules of Pro-
(h) Be publicly disciplined on ethical
fessional Conduct that raises a sub-
or professional misconduct grounds by
stantial question as to that practi-
any duly constituted authority of:
tioner’s honesty, trustworthiness or
fitness as a practitioner in other re- (1) A State,
spects, shall inform the OED Director (2) The United States, or
and any other appropriate professional (3) The country in which the practi-
authority. tioner resides; or
(b) A practitioner who knows that a (i) Engage in other conduct that ad-
judge, hearing officer, administrative versely reflects on the practitioner’s

law judge, administrative patent judge, fitness to practice before the Office.
451
§§ 11.805–11.900 37 CFR Ch. I (7–1–16 Edition)
§§ 11.805–11.900 [Reserved] 41.61 Notice of appeal and cross appeal to

Board.
§ 11.901 Savings clause. 41.63 Amendments and affidavits or other
evidence after appeal.
(a) A disciplinary proceeding based 41.64 Jurisdiction over appeal in inter partes
on conduct engaged in prior to the ef- reexamination.
fective date of these regulations may 41.66 Time for filing briefs.
be instituted subsequent to such effec- 41.67 Appellant’s brief.
tive date, if such conduct would con- 41.68 Respondent’s brief.
41.69 Examiner’s answer.
tinue to justify disciplinary sanctions
41.71 Rebuttal brief.
under the provisions of this part. 41.73 Oral hearing.
(b) No practitioner shall be subject to 41.77 Decisions and other actions by the
a disciplinary proceeding under this Board.
part based on conduct engaged in be- 41.79 Rehearing.
fore the effective date hereof if such 41.81 Action following decision.
conduct would not have been subject to
disciplinary action before such effec- Subpart D—Contested Cases
tive date. 41.100 Definitions.
41.101 Notice of proceeding.
PARTS 15–15a [RESERVED] 41.102 Completion of examination.
41.103 Jurisdiction over involved files.
41.104 Conduct of contested case.
PART 41—PRACTICE BEFORE THE 41.106 Filing and service.
PATENT TRIAL AND APPEAL BOARD 41.108 Lead counsel.
41.109 Access to and copies of Office records.
Subpart A—General Provisions 41.110 Filing claim information.
41.120 Notice of basis for relief.
Sec. 41.121 Motions.
41.1 Policy. 41.122 Oppositions and replies.
41.2 Definitions. 41.123 Default filing times.
41.3 Petitions. 41.124 Oral argument.
41.4 Timeliness. 41.125 Decision on motions.
41.5 Counsel. 41.126 Arbitration.
41.6 Public availability of Board records. 41.127 Judgment.
41.7 Management of the record. 41.128 Sanctions.
41.8 Mandatory notices. 41.150 Discovery.
41.9 Action by owner. 41.151 Admissibility.
41.10 Correspondence addresses. 41.152 Applicability of the Federal Rules of
41.11 Ex parte communications in inter Evidence.
partes proceedings. 41.153 Records of the Office.
41.12 Citation of authority. 41.154 Form of evidence.
41.20 Fees. 41.155 Objection; motion to exclude; motion
in limine.
Subpart B—Ex Parte Appeals 41.156 Compelling testimony and produc-
tion.
41.30 Definitions. 41.157 Taking testimony.
41.31 Appeal to Board. 41.158 Expert testimony; tests and data.
41.33 Amendments and affidavits or other
Evidence after appeal. Subpart E—Patent Interferences
41.35 Jurisdiction over appeal.
41.37 Appeal brief. 41.200 Procedure; pendency.
41.39 Examiner’s answer. 41.201 Definitions.
41.40 Tolling of time period to file a reply 41.202 Suggesting an interference.
brief. 41.203 Declaration.
41.41 Reply brief. 41.204 Notice of basis for relief.
41.45 Appeal forwarding fee. 41.205 Settlement agreements.
41.47 Oral hearing. 41.206 Common interests in the invention.
41.50 Decisions and other actions by the 41.207 Presumptions.
Board. 41.208 Content of substantive and responsive
41.52 Rehearing. motions.
41.54 Action following decision. AUTHORITY: 35 U.S.C. 2(b)(2), 3(a)(2)(A), 21,
23, 32, 41, 134, 135, and Public Law 112–29.
Subpart C—Inter Partes Appeals

41.60 Definitions. otherwise noted.
452
Subpart A—General Provisions U.S.C. 134 or a petition under § 41.3. An

appeal in an inter partes reexamination
§ 41.1 Policy. is not a contested case.
(a) Scope. Part 41 governs appeals and Final means, with regard to a Board
interferences before the Patent Trial action, final for the purposes of judi-
and Appeal Board. Sections 1.1 to 1.36 cial review. A decision is final only if:
and 1.181 to 1.183 of this title also apply (1) In a panel proceeding. The decision
to practice before the Board, as do is rendered by a panel, disposes of all
other sections of part 1 of this title issues with regard to the party seeking
that are incorporated by reference into judicial review, and does not indicate
part 41. that further action is required; and
(b) Construction. The provisions of (2) In other proceedings. The decision
Part 41 shall be construed to secure the disposes of all issues or the decision
just, speedy, and inexpensive resolu- states it is final.
tion of every proceeding before the Hearing means consideration of the
Board. issues of record. Rehearing means re-
(c) Decorum. Each party must act consideration.
with courtesy and decorum in all pro- Office means United States Patent
ceedings before the Board, including and Trademark Office.
interactions with other parties.
Panel means at least three Board
[69 FR 50003, Aug. 12, 2004, as amended at 77 members acting in a panel proceeding.
FR 46630, Aug. 6, 2012] Panel proceeding means a proceeding
in which final action is reserved by
§ 41.2 Definitions.
statute to at least three Board mem-
Unless otherwise clear from the con- bers, but includes a non-final portion of
text, the following definitions apply to such a proceeding whether adminis-
proceedings under this part: tered by a panel or not.
Affidavit means affidavit, declaration Party, in this part, means any entity
under § 1.68 of this title, or statutory participating in a Board proceeding,
declaration under 28 U.S.C. 1746. A other than officers and employees of
transcript of an ex parte deposition the Office, including:
may be used as an affidavit in a con-
(1) An appellant;
tested case.
Board means the Patent Trial and (2) A participant in a contested case;
Appeal Board and includes: (3) A petitioner; and
(1) For a final Board action: (4) Counsel for any of the above,
(i) In an appeal or contested case, a where context permits.
panel of the Board. [69 FR 50003, Aug. 12, 2004, as amended at 77
(ii) In a proceeding under § 41.3, the FR 46630, Aug. 6, 2012]
Chief Administrative Patent Judge or
another official acting under an ex- § 41.3 Petitions.
press delegation from the Chief Admin-
istrative Patent Judge. (a) Deciding official. Petitions must be
(2) For non-final actions, a Board addressed to the Chief Administrative
member or employee acting with the Patent Judge. A panel or an adminis-
authority of the Board. trative patent judge may certify a
Board member means the Under Sec- question of policy to the Chief Admin-
retary of Commerce for Intellectual istrative Patent Judge for decision.
Property and Director of the United The Chief Administrative Patent Judge
States Patent and Trademark Office, may delegate authority to decide peti-
the Deputy Under Secretary of Com- tions.
merce for Intellectual Property and (b) Scope. This section covers peti-
Deputy Director of the United States tions on matters pending before the
Patent and Trademark Office, the Board (§§ 41.35, 41.64, 41.103, and 41.205);
Commissioner for Patents, the Com- otherwise, see §§ 1.181 to 1.183 of this
missioner for Trademarks, and the ad- title. The following matters are not
ministrative patent judges. subject to petition:
Contested case means a Board pro- (1) Issues committed by statute to a

ceeding other than an appeal under 35 panel, and
453
§ 41.4 37 CFR Ch. I (7–1–16 Edition)
(2) In pending contested cases, proce- (2) Filing of a brief or request for oral
dural issues. See § 41.121(a)(3) and hearing (see §§ 41.37, 41.41, 41.47, 41.67,
§ 41.125(c). 41.68, 41.71 and 41.73), or
(c) Petition fee. The fee set in § 41.20(a) (3) Seeking judicial review (see
must accompany any petition under §§ 1.301 to 1.304 of this title).
this section except no fee is required [69 FR 50003, Aug. 12, 2004, as amended at 72
for a petition under this section seek- FR 18907, Apr. 16, 2007]
ing supervisory review.
(d) Effect on proceeding. The filing of § 41.5 Counsel.
a petition does not stay the time for While the Board has jurisdiction:
any other action in a Board proceeding. (a) Appearance pro hac vice. The
(e) Time for action. (1) Except as oth- Board may authorize a person other
erwise provided in this part or as the than a registered practitioner to ap-
Board may authorize in writing, a pear as counsel in a specific pro-
party may: ceeding.
(i) File the petition within 14 days (b) Disqualification. (1) The Board
from the date of the action from which may disqualify counsel in a specific
the party is requesting relief, and proceeding after notice and an oppor-
(ii) File any request for reconsider- tunity to be heard.
ation of a petition decision within 14 (2) A decision to disqualify is not
days of the decision on petition or such final for the purposes of judicial review
other time as the Board may set. until certified by the Chief Administra-
(2) A party may not file an opposition tive Patent Judge.
or a reply to a petition without Board (c) Withdrawal. Counsel may not
authorization. withdraw from a proceeding before the
Board unless the Board authorizes such
[69 FR 50003, Aug. 12, 2004, as amended at 69 withdrawal. See § 11.116 of this sub-
FR 58260, Sept. 30, 2004]
chapter regarding conditions for with-
§ 41.4 Timeliness. drawal.
(d) Procedure. The Board may insti-
(a) Extensions of time. Extensions of tute a proceeding under this section on
time will be granted only on a showing its own or a party in a contested case
of good cause except as otherwise pro- may request relief under this section.
vided by rule. (e) Referral to the Director of Enroll-
(b) Late filings. (1) A late filing that ment and Discipline. Possible violations
results in either an application becom- of the disciplinary rules in part 11 of
ing abandoned or a reexamination pros- this subchapter may be referred to the
ecution becoming terminated under Office of Enrollment and Discipline for
§ 1.550(d) or § 1.957(b) of this title or lim- investigation. See § 11.22 of this sub-
ited under § 1.957(c) of this title may be chapter.
revived as set forth in § 1.137 of this [69 FR 50003, Aug. 12, 2004, as amended at 73
title. FR 47704, Aug. 14, 2008; 78 FR 20211, Apr. 3,
(2) A late filing that does not result 2013]
in either an application becoming
abandoned or a reexamination prosecu- § 41.6 Public availability of Board
tion becoming terminated under records.
§ 1.550(d) or § 1.957(b) of this title or lim- (a) Publication—(1) Generally. Any
ited under § 1.957(c) of this title will be Board action is available for public in-
excused upon a showing of excusable spection without a party’s permission
neglect or a Board determination that if rendered in a file open to the public
consideration on the merits would be pursuant to § 1.11 of this title or in an
in the interest of justice. application that has been published in
(c) Scope. This section governs all accordance with §§ 1.211 to 1.221 of this
proceedings before the Board, but does title. The Office may independently
not apply to filings related to Board publish any Board action that is avail-
proceedings before or after the Board able for public inspection.
has jurisdiction, such as: (2) Determination of special cir-
(1) Extensions during prosecution cumstances. Any Board action not pub-
(see § 1.136 of this title), lishable under paragraph (a)(1) of this
454
section may be published or made case (§ 41.101), and within 20 days of any
available for public inspection if the change during the proceeding, a party
Director believes that special cir- must identify:
cumstances warrant publication and a (1) Its real party-in-interest, and
party does not, within two months (2) Each judicial or administrative
after being notified of the intention to proceeding that could affect, or be af-
make the action public, object in writ- fected by, the Board proceeding.
ing on the ground that the action dis- (b) For contested cases, a party seek-
closes the objecting party’s trade se- ing judicial review of a Board pro-
cret or other confidential information ceeding must file a notice with the
and states with specificity that such Board of the judicial review within 20
information is not otherwise publicly days of the filing of the complaint or
available. If the action discloses such the notice of appeal. The notice to the
information, the party shall identify Board must include a copy of the com-
the deletions in the text of the action plaint or notice of appeal. See also
considered necessary to protect the in- §§ 1.301 to 1.304 of this title.
formation. If the affected party con-
siders that the entire action must be § 41.9 Action by owner.
withheld from the public to protect (a) Entire interest. An owner of the en-
such information, the party must ex- tire interest in an application or pat-
plain why. The party will be given ent involved in a Board proceeding may
time, not less than twenty days, to re- act in the proceeding to the exclusion
quest reconsideration and seek court of the inventor (see §§ 3.71 and 3.73 of
review before any contested portion of this title).
the action is made public over its ob- (b) Part interest. An owner of a part
jection. interest in an application or patent in-
(b) Record of proceeding. (1) The volved in a Board proceeding may peti-
record of a Board proceeding is avail- tion to act in the proceeding to the ex-
able to the public unless a patent appli- clusion of an inventor or a co-owner.
cation not otherwise available to the The petition must show the inability
public is involved. or refusal of an inventor or co-owner to
(2) Notwithstanding paragraph (b)(1) prosecute the proceeding or other
of this section, after a final Board ac- cause why it is in the interest of jus-
tion in or judgment in a Board pro- tice to permit the owner of a part in-
ceeding, the record of the Board pro- terest to act in the proceeding. An
ceeding will be made available to the order granting the petition may set
public if any involved file is or becomes conditions on the actions of the parties
open to the public under § 1.11 of this during the proceeding.
title or an involved application is or [69 FR 50003, Aug. 12, 2004, as amended at 77
becomes published under §§ 1.211 to 1.221 FR 48826, Aug. 14, 2012]
of this title.
§ 41.10 Correspondence addresses.
§ 41.7 Management of the record. Except as the Board may otherwise
(a) The Board may expunge any paper direct,
directed to a Board proceeding, or filed (a) Appeals. Correspondence in an ap-
while an application or patent is under plication or a patent involved in an ap-
the jurisdiction of the Board, that is peal (subparts B and C of this part)
not authorized under this part or in a during the period beginning when an
Board order, or that is filed contrary to appeal docketing notice is issued and
a Board order. ending when a decision has been ren-
(b) A party may not file a paper pre- dered by the Board, as well as any re-
viously filed in the same Board pro- quest for rehearing of a decision by the
ceeding, not even as an exhibit or ap- Board, shall be mailed to: Patent Trial
pendix, without Board authorization or and Appeal Board, United States Pat-
as required by rule. ent and Trademark Office, PO Box 1450,
Alexandria, Virginia 22313–1450. Notices
§ 41.8 Mandatory notices. of appeal, appeal briefs, reply briefs, re-
(a) In an appeal brief (§§ 41.37, 41.67, or quests for oral hearing, as well as all
41.68) or at the initiation of a contested other correspondence in an application
455
§ 41.11 37 CFR Ch. I (7–1–16 Edition)
or a patent involved in an appeal to the (2)(i) For filing a brief in support of

Board for which an address is not oth- an appeal in an application or ex parte
erwise specified, should be addressed as reexamination proceeding: $0.00.
set out in § 1.1(a)(1)(i) of this title. (ii) In addition to the fee for filing a
(b) Interferences. Mailed correspond- notice of appeal, for filing a brief in
ence in interference (subpart D of this support of an appeal in an inter partes
part) shall be sent to Mail Stop INTER- reexamination proceeding:
FERENCE, Patent Trial and Appeal
Board, United States Patent and By a micro entity (§ 1.29) .... $500.00
Trademark Office, PO Box 1450, Alexan- By a small entity (§ 1.27(a)) 1,000.00
dria, Virginia 22313–1450. By other than a small or
(c) Trial Proceedings. Correspondence micro entity .................... 2,000.00
in trial proceedings (part 42 of this (3) For filing a request for an oral
title) are governed by § 42.6(b) of this hearing before the Board in an appeal
title. under 35 U.S.C. 134:
[77 FR 46630, Aug. 6, 2012] By a micro entity (§ 1.29) .... $325.00
By a small entity (§ 1.27(a)) 650.00
§ 41.11 Ex Parte communications in
inter partes proceedings. By other than a small or
micro entity .................... 1,300.00
An ex parte communication about an
inter partes reexamination (subpart C of (4) In addition to the fee for filing a
this part) or about a contested case notice of appeal, for forwarding an ap-
(subparts D and E of this part) with a peal in an application or ex parte reex-
Board member, or with a Board em- amination proceeding to the Board:
ployee assigned to the proceeding, is By a micro entity (§ 1.29) .... $500.00
not permitted. By a small entity (§ 1.27(a)) 1,000.00
§ 41.12 Citation of authority. By other than a small or
micro entity .................... 2,000.00
(a) For any United States Supreme
Court decision, citation to the United [78 FR 4290, Jan. 18, 2013]
States Reports is preferred.
(b) For any decision other than a
United States Supreme Court decision,
Subpart B—Ex Parte Appeals
citation to the West Reporter System § 41.30 Definitions.
is preferred.
(c) Citations to authority must in- In addition to the definitions in § 41.2,
clude pinpoint citations whenever a the following definitions apply to pro-
specific holding or portion of an au- ceedings under this subpart unless oth-
thority is invoked. erwise clear from the context:
(d) Non-binding authority should be Applicant means either the applicant
used sparingly. If the authority is not in a national application for a patent
an authority of the Office and is not re- or the applicant in an application for
produced in the United States Reports reissue of a patent.
or the West Reporter System, a copy of Evidence means something (including
the authority should be provided. testimony, documents and tangible ob-
[76 FR 72296, Nov. 22, 2011] jects) that tends to prove or disprove
the existence of an alleged fact, except
§ 41.20 Fees. that for the purpose of this subpart
(a) Petition fee. The fee for filing a pe- Evidence does not include dictionaries,
tition under this part is: $400.00. which may be cited before the Board.
(b) Appeal fees. (1) For filing a notice Owner means the owner of the patent
of appeal from the examiner to the undergoing ex parte reexamination
Patent Trial and Appeal Board: under § 1.510 of this title.
By a micro entity (§ 1.29) .... $200.00 Proceeding means either a national
By a small entity (§ 1.27(a)) 400.00 application for a patent, an application
By other than a small or for reissue of a patent, an ex parte reex-

micro entity .................... 800.00 amination proceeding, or a trial before
456
the Patent Trial and Appeal Board. Ap- of all claims under rejection unless
peal to the Board in an inter partes re- cancelled by an amendment filed by
examination proceeding is controlled the applicant and entered by the Office.
by subpart C of this part. Questions relating to matters not af-
Record means the items listed in the fecting the merits of the invention may
content listing of the Image File Wrap- be required to be settled before an ap-
per of the official file of the application peal can be considered.
or reexamination proceeding on appeal (d) The time periods set forth in
or the official file of the Office if other paragraphs (a)(1) through (a)(3) of this
than the Image File Wrapper, exclud- section are extendable under the provi-
ing amendments, Evidence, and other sions of § 1.136 of this title for patent
documents that were not entered. In applications and § 1.550(c) of this title
the case of an issued patent being re- for ex parte reexamination proceedings.
issued or reexamined, the Record fur- [69 FR 50003, Aug. 12, 2004, as amended at 76
ther includes the Record of the patent FR 72296, Nov. 22, 2011]
being reissued or reexamined.
[69 FR 50003, Aug. 12, 2004, as amended at 76 § 41.33 Amendments and affidavits or
FR 72296, Nov. 22, 2011; 77 FR 46630, Aug. 6, other Evidence after appeal.
2012] (a) Amendments filed after the date
of filing an appeal pursuant to
§ 41.31 Appeal to Board. § 41.31(a)(1) through (a)(3) and prior to
(a) Who may appeal and how to file an the date a brief is filed pursuant to
appeal. An appeal is taken to the Board § 41.37 may be admitted as provided in
by filing a notice of appeal. § 1.116 of this title.
(1) Every applicant, any of whose (b) Amendments filed on or after the
claims has been twice rejected, may date of filing a brief pursuant to § 41.37
appeal from the decision of the exam- may be admitted:
iner to the Board by filing a notice of (1) To cancel claims, where such can-
appeal accompanied by the fee set cellation does not affect the scope of
forth in § 41.20(b)(1) within the time pe- any other pending claim in the pro-
riod provided under § 1.134 of this title ceeding, or
for reply. (2) To rewrite dependent claims into
(2) Every owner of a patent under ex independent form.
parte reexamination filed under § 1.510 (c) All other amendments filed after
of this title before November 29, 1999, the date of filing an appeal pursuant to
any of whose claims has been twice re- § 41.31(a)(1) through (a)(3) will not be
jected, may appeal from the decision of admitted except as permitted by
the examiner to the Board by filing a §§ 41.39(b)(1), 41.50(a)(2)(i), and
notice of appeal accompanied by the 41.50(b)(1).
fee set forth in § 41.20(b)(1) within the (d)(1) An affidavit or other Evidence
time period provided under § 1.134 of filed after the date of filing an appeal
this title for reply. pursuant to § 41.31(a)(1) through (a)(3)
(3) Every owner of a patent under ex and prior to the date of filing a brief
parte reexamination filed under § 1.510 pursuant to § 41.37 may be admitted if
of this title on or after November 29, the examiner determines that the affi-
1999, any of whose claims has been fidavit or other Evidence overcomes all
nally (§ 1.113 of this title) rejected, may rejections under appeal and that a
appeal from the decision of the exam- showing of good and sufficient reasons
iner to the Board by filing a notice of why the affidavit or other Evidence is
appeal accompanied by the fee set necessary and was not earlier pre-
forth in § 41.20(b)(1) within the time pe- sented has been made.
riod provided under § 1.134 of this title (2) All other affidavits or other Evi-
for reply. dence filed after the date of filing an
(b) The signature requirements of appeal pursuant to § 41.31(a)(1) through
§§ 1.33 and 11.18(a) of this title do not (a)(3) will not be admitted except as
apply to a notice of appeal filed under permitted by §§ 41.39(b)(1), 41.50(a)(2)(i),
this section. and 41.50(b)(1).
(c) An appeal, when taken, is pre- [69 FR 50003, Aug. 12, 2004, as amended at 76
sumed to be taken from the rejection FR 72296, Nov. 22, 2011]
457
§ 41.35 37 CFR Ch. I (7–1–16 Edition)
§ 41.35 Jurisdiction over appeal. peal under § 41.31. The appeal brief fee
in an application or ex parte reexam-
(a) Beginning of jurisdiction. Jurisdic-
ination proceeding is $0.00, but if the
tion over the proceeding passes to the
appeal results in an examiner’s answer,
Board upon the filing of a reply brief
the appeal forwarding fee set forth in
under § 41.41 or the expiration of the
§ 41.20(b)(4) must be paid within the
time in which to file such a reply brief,
time period specified in § 41.45 to avoid
whichever is earlier.
dismissal of an appeal.
(b) End of jurisdiction. The jurisdic-
(b) Failure to file a brief. On failure to
tion of the Board ends when:
file the brief within the period speci-
(1) The Director or the Board enters
fied in paragraph (a) of this section,
a remand order (see §§ 41.35(c), 41.35(e),
the appeal will stand dismissed.
and 41.50(a)(1)),
(c) Content of appeal brief. (1) Except
(2) The Board enters a final decision
as otherwise provided in this para-
(see § 41.2) and judicial review is sought
graph, the brief shall contain the fol-
or the time for seeking judicial review
lowing items under appropriate head-
has expired,
ings and in the order indicated in para-
(3) An express abandonment which
graphs (c)(1)(i) through (v) of this sec-
complies with § 1.138 of this title is rec-
tion, except that a brief filed by an ap-
ognized,
pellant who is not represented by a reg-
(4) A request for continued examina-
istered practitioner need only substan-
tion is filed which complies with § 1.114
tially comply with paragraphs (c)(1)(i),
of this title,
(c)(1)(ii), (c)(1)(iv), and (c)(1)(v) of this
(5) Appellant fails to take any re-
section:
quired action under §§ 41.39(b),
(i) Real party in interest. A statement
41.50(a)(2), 41.50(b), or 41.50(d), and the
identifying by name the real party in
Board enters an order of dismissal, or
interest at the time the appeal brief is
(6) Appellant reopens prosecution
filed, except that such statement is not
pursuant to § 41.40(b) or in response to a
required if the named inventor or in-
new ground of rejection entered in a
ventors are themselves the real party
decision of the Board (see § 41.50(b)(1)).
in interest. If an appeal brief does not
(c) Remand ordered by the Director.
contain a statement of the real party
Prior to the entry of a decision on the
in interest, the Office may assume that
appeal by the Board (see § 41.50), the Di-
the named inventor or inventors are
rector may sua sponte order the pro-
the real party in interest.
ceeding remanded to the examiner.
(ii) Related appeals, interferences, and
(d) Documents filed during Board’s ju-
trials. A statement identifying by appli-
risdiction. Except for petitions author-
cation, patent, appeal, interference, or
ized by this part, consideration of any
trial number all other prior and pend-
information disclosure statement or
ing appeals, interferences, trials before
petition filed while the Board possesses
the Board, or judicial proceedings (col-
jurisdiction over the proceeding will be
lectively, ‘‘related cases’’) which sat-
held in abeyance until the Board’s ju-
isfy all of the following conditions: in-
risdiction ends.
volve an application or patent owned
(e) Administrative remands ordered by
by the appellant or assignee, are
the Board. If, after receipt and review
known to appellant, the appellant’s
of the proceeding, the Board deter-
legal representative, or assignee, and
mines that the file is not complete or
may be related to, directly affect or be
is not in compliance with the require-
directly affected by or have a bearing
ments of this subpart, the Board may
on the Board’s decision in the pending
relinquish jurisdiction to the examiner
appeal, except that such statement is
or take other appropriate action to
not required if there are no such re-
permit completion of the file.
lated cases. If an appeal brief does not
[76 FR 72297, Nov. 22, 2011] contain a statement of related cases,
the Office may assume that there are
§ 41.37 Appeal brief. no such related cases.
(a) Timing. Appellant must file a brief (iii) Summary of claimed subject matter.
under this section within two months A concise explanation of the subject
from the date of filing the notice of ap- matter defined in each of the rejected
458
independent claims, which shall refer on the basis of the selected claim
to the specification in the Record by alone. Notwithstanding any other pro-
page and line number or by paragraph vision of this paragraph, the failure of
number, and to the drawing, if any, by appellant to separately argue claims
reference characters. For each rejected which appellant has grouped together
independent claim, and for each de- shall constitute a waiver of any argu-
pendent claim argued separately under ment that the Board must consider the
the provisions of paragraph (c)(1)(iv) of patentability of any grouped claim sep-
this section, if the claim contains a arately. Under each heading identi-
means plus function or step plus func- fying the ground of rejection being con-
tion recitation as permitted by 35 tested, any claim(s) argued separately
U.S.C. 112(f), then the concise expla-
or as a subgroup shall be argued under
nation must identify the structure,
a separate subheading that identifies
material, or acts described in the speci-
fication in the Record as corresponding the claim(s) by number. A statement
to each claimed function with ref- which merely points out what a claim
erence to the specification in the recites will not be considered an argu-
Record by page and line number or by ment for separate patentability of the
paragraph number, and to the drawing, claim.
if any, by reference characters. Ref- (v) Claims appendix. An appendix con-
erence to the patent application publi- taining a copy of the claims involved
cation does not satisfy the require- in the appeal.
ments of this paragraph. (2) A brief shall not include any new
(iv) Argument. The arguments of ap- or non-admitted amendment, or any
pellant with respect to each ground of new or non-admitted affidavit or other
rejection, and the basis therefor, with Evidence. See § 1.116 of this title for
citations of the statutes, regulations, treatment of amendments, affidavits or
authorities, and parts of the Record re- other evidence filed after final action
lied on. The arguments shall explain but before or on the same date of filing
why the examiner erred as to each an appeal and § 41.33 for treatment of
ground of rejection contested by appel- amendments, affidavits or other Evi-
lant. Except as provided for in §§ 41.41, dence filed after the date of filing the
41.47 and 41.52, any arguments or au-
appeal. Review of an examiner’s refusal
thorities not included in the appeal
to admit an amendment or Evidence is
brief will be refused consideration by
by petition to the Director. See § 1.181
the Board for purposes of the present
appeal. Each ground of rejection con- of this title.
tested by appellant must be argued (d) Notice of non-compliance. If a brief
under a separate heading, and each is filed which does not comply with all
heading shall reasonably identify the the requirements of paragraph (c) of
ground of rejection being contested this section, appellant will be notified
(e.g., by claim number, statutory basis, of the reasons for non-compliance and
and applied reference, if any). For each given a time period within which to file
ground of rejection applying to two or an amended brief. If appellant does not,
more claims, the claims may be argued within the set time period, file an
separately (claims are considered by amended brief that overcomes all the
appellant as separately patentable), as reasons for non-compliance stated in
a group (all claims subject to the the notification, the appeal will stand
ground of rejection stand or fall to- dismissed. Review of a determination
gether), or as a subgroup (a subset of of non-compliance is by petition to the
the claims subject to the ground of re- Chief Administrative Patent Judge. See
jection stand or fall together). When § 41.3.
multiple claims subject to the same (e) Extensions of time. The time peri-
ground of rejection are argued as a ods set forth in this section are extend-
group or subgroup by appellant, the
able under the provisions of § 1.136 of
Board may select a single claim from
this title for patent applications and
the group or subgroup and may decide
the appeal as to the ground of rejection

with respect to the group or subgroup
459
§ 41.39 37 CFR Ch. I (7–1–16 Edition)
§ 1.550(c) of this title for ex parte reex- Any request that prosecution be re-
amination proceedings. opened under this paragraph will be
[69 FR 50003, Aug. 12, 2004, as amended at 76 treated as a request to withdraw the
FR 72297, Nov. 22, 2011; 77 FR 46630, Aug. 6, appeal.
2012; 78 FR 4291, Jan. 18, 2013; 78 FR 17107, (2) Maintain appeal. Request that the
Mar. 20, 2013] appeal be maintained by filing a reply
brief as set forth in § 41.41. Such a reply
§ 41.39 Examiner’s answer. brief must address as set forth in
(a) Content of examiner’s answer. The § 41.37(c)(1)(iv) each new ground of re-
primary examiner may, within such jection and should follow the other re-
time as may be directed by the Direc- quirements of a brief as set forth in
tor, furnish a written answer to the ap- § 41.37(c). A reply brief may not be ac-
peal brief. companied by any amendment, affi-
(1) An examiner’s answer is deemed davit (§§ 1.130, 1.131 or 1.132 of this of
to incorporate all of the grounds of re- this title) or other Evidence. If a reply
jection set forth in the Office action brief filed pursuant to this section is
from which the appeal is taken (as accompanied by any amendment, affi-
modified by any advisory action and davit or other Evidence, it shall be
pre-appeal brief conference decision), treated as a request that prosecution
unless the examiner’s answer expressly be reopened before the primary exam-
indicates that a ground of rejection has iner under paragraph (b)(1) of this sec-
been withdrawn. tion.
(2) An examiner’s answer may in- (c) Extensions of time. Extensions of
clude a new ground of rejection. For time under § 1.136(a) of this title for
purposes of the examiner’s answer, any patent applications are not applicable
rejection that relies upon any Evidence to the time period set forth in this sec-
not relied upon in the Office action tion. See § 1.136(b) of this title for ex-
from which the appeal is taken (as tensions of time to reply for patent ap-
modified by any advisory action) shall plications and § 1.550(c) of this title for
be designated by the primary examiner extensions of time to reply for ex parte
as a new ground of rejection. The ex- reexamination proceedings.
aminer must obtain the approval of the
Director to furnish an answer that in- [69 FR 50003, Aug. 12, 2004, as amended at 76
cludes a new ground of rejection. FR 72298, Nov. 22, 2011]
(b) Appellant’s response to new ground
of rejection. If an examiner’s answer § 41.40 Tolling of time period to file a
reply brief.
contains a rejection designated as a
new ground of rejection, appellant (a) Timing. Any request to seek re-
must within two months from the date view of the primary examiner’s failure
of the examiner’s answer exercise one to designate a rejection as a new
of the following two options to avoid ground of rejection in an examiner’s
sua sponte dismissal of the appeal as to answer must be by way of a petition to
the claims subject to the new ground of the Director under § 1.181 of this title
rejection: filed within two months from the entry
(1) Reopen prosecution. Request that of the examiner’s answer and before
prosecution be reopened before the pri- the filing of any reply brief. Failure of
mary examiner by filing a reply under appellant to timely file such a petition
§ 1.111 of this title with or without will constitute a waiver of any argu-
amendment or submission of affidavits ments that a rejection must be des-
(§§ 1.130, 1.131 or 1.132 of this of this ignated as a new ground of rejection.
title) or other Evidence. Any amend- (b) Petition granted and prosecution re-
ment or submission of affidavits or opened. A decision granting a petition
other Evidence must be relevant to the under § 1.181 to designate a new ground
new ground of rejection. A request that of rejection in an examiner’s answer
complies with this paragraph will be will provide a two-month time period
entered and the application or the pat- in which appellant must file a reply
ent under ex parte reexamination will under § 1.111 of this title to reopen the
be reconsidered by the examiner under prosecution before the primary exam-

the provisions of § 1.112 of this title. iner. On failure to timely file a reply
460
under § 1.111, the appeal will stand dis- present appeal, unless good cause is
missed. shown.
(c) Petition not granted and appeal (c) Extensions of time. Extensions of
maintained. A decision refusing to time under § 1.136(a) of this title for
grant a petition under § 1.181 of this patent applications are not applicable
title to designate a new ground of re- to the time period set forth in this sec-
jection in an examiner’s answer will tion. See § 1.136(b) of this title for ex-
provide a two-month time period in tensions of time to reply for patent ap-
which appellant may file only a single plications and § 1.550(c) of this title for
reply brief under § 41.41. extensions of time to reply for ex parte
(d) Withdrawal of petition and appeal reexamination proceedings.
maintained. If a reply brief under § 41.41
is filed within two months from the [69 FR 50003, Aug. 12, 2004, as amended at 76
date of the examiner’s answer and on FR 72298, Nov. 22, 2011]
or after the filing of a petition under
§ 1.181 to designate a new ground of re- § 41.45 Appeal forwarding fee.
jection in an examiner’s answer, but (a) Timing. Appellant in an applica-
before a decision on the petition, the tion or ex parte reexamination pro-
reply brief will be treated as a request ceeding must pay the fee set forth in
to withdraw the petition and to main- § 41.20(b)(4) within the later of two
tain the appeal. months from the date of either the ex-
(e) Extensions of time. Extensions of aminer’s answer, or a decision refusing
time under § 1.136(a) of this title for to grant a petition under § 1.181 of this
patent applications are not applicable chapter to designate a new ground of
to the time period set forth in this sec- rejection in an examiner’s answer.
tion. See § 1.136(b) of this title for ex- (b) Failure to pay appeal forwarding
tensions of time to reply for patent ap- fee. On failure to pay the fee set forth
plications and § 1.550(c) of this title for in § 41.20(b)(4) within the period speci-
extensions of time to reply for ex parte fied in paragraph (a) of this section,
reexamination proceedings. the appeal will stand dismissed.
[76 FR 72298, Nov. 22, 2011] (c) Extensions of time. Extensions of
time under § 1.136(a) of this title for
§ 41.41 Reply brief. patent applications are not applicable
(a) Timing. Appellant may file only a to the time period set forth in this sec-
single reply brief to an examiner’s an- tion. See § 1.136(b) of this title for ex-
swer within the later of two months tensions of time to reply for patent ap-
from the date of either the examiner’s plications and § 1.550(c) of this title for
answer, or a decision refusing to grant extensions of time to reply for ex parte
a petition under § 1.181 of this title to reexamination proceedings.
designate a new ground of rejection in
[78 FR 17107, Mar. 20, 2013]
an examiner’s answer.
(b) Content. (1) A reply brief shall not
§ 41.47 Oral hearing.
include any new or non-admitted
amendment, or any new or non-admit- (a) An oral hearing should be re-
ted affidavit or other Evidence. See quested only in those circumstances in
§ 1.116 of this title for amendments, af- which appellant considers such a hear-
fidavits or other evidence filed after ing necessary or desirable for a proper
final action but before or on the same presentation of the appeal. An appeal
date of filing an appeal and § 41.33 for decided on the briefs without an oral
amendments, affidavits or other Evi- hearing will receive the same consider-
dence filed after the date of filing the ation by the Board as appeals decided
appeal. after an oral hearing.
(2) Any argument raised in the reply (b) If appellant desires an oral hear-
brief which was not raised in the ap- ing, appellant must file, as a separate
peal brief, or is not responsive to an ar- paper captioned ‘‘REQUEST FOR
gument raised in the examiner’s an- ORAL HEARING,’’ a written request
swer, including any designated new for such hearing accompanied by the
ground of rejection, will not be consid- fee set forth in § 41.20(b)(3) within two
ered by the Board for purposes of the months from the date of the examiner’s
461
§ 41.50 37 CFR Ch. I (7–1–16 Edition)
answer or on the date of filing of a § 41.50 Decisions and other actions by

reply brief, whichever is earlier. the Board.
(c) If no request and fee for oral hear- (a)(1) Affirmance and reversal. The
ing have been timely filed by appellant Board, in its decision, may affirm or
as required by paragraph (b) of this sec- reverse the decision of the examiner in
tion, the appeal will be assigned for whole or in part on the grounds and on
consideration and decision on the the claims specified by the examiner.
briefs without an oral hearing. The affirmance of the rejection of a
(d) If appellant has complied with all claim on any of the grounds specified
the requirements of paragraph (b) of constitutes a general affirmance of the
this section, a date for the oral hearing decision of the examiner on that claim,
will be set, and due notice thereof except as to any ground specifically re-
given to appellant. If an oral hearing is versed. The Board may also remand an
held, an oral argument may be pre- application to the examiner.
sented by, or on behalf of, the primary (2) If a substitute examiner’s answer
examiner if considered desirable by ei- is written in response to a remand by
ther the primary examiner or the the Board for further consideration of a
Board. A hearing will be held as stated rejection pursuant to paragraph (a)(1)
in the notice, and oral argument will of this section, the appellant must
within two months from the date of the
ordinarily be limited to twenty min-
substitute examiner’s answer exercise
utes for appellant and fifteen minutes
one of the following two options to
for the primary examiner unless other-
avoid sua sponte dismissal of the ap-
wise ordered.
peal as to the claims subject to the re-
(e)(1) Appellant will argue first and jection for which the Board has re-
may reserve time for rebuttal. At the manded the proceeding:
oral hearing, appellant may only rely (i) Reopen prosecution. Request that
on Evidence that has been previously prosecution be reopened before the ex-
entered and considered by the primary aminer by filing a reply under § 1.111 of
examiner and present argument that this title with or without amendment
has been relied upon in the brief or or submission of affidavits (§§ 1.130,
reply brief except as permitted by 1.131 or 1.132 of this title) or other Evi-
paragraph (e)(2) of this section. The dence. Any amendment or submission
primary examiner may only rely on ar- of affidavits or other Evidence must be
gument and Evidence relied upon in an relevant to the issues set forth in the
answer except as permitted by para- remand or raised in the substitute ex-
graph (e)(2) of this section. aminer’s answer. A request that com-
(2) Upon a showing of good cause, applies with this paragraph (a) will be en-
pellant and/or the primary examiner tered and the application or the patent
may rely on a new argument based under ex parte reexamination will be
upon a recent relevant decision of ei- reconsidered by the examiner under the
ther the Board or a Federal Court. provisions of § 1.112 of this title. Any
(f) Notwithstanding the submission request that prosecution be reopened
of a request for oral hearing complying under this paragraph will be treated as
with this rule, if the Board decides that a request to withdraw the appeal.
a hearing is not necessary, the Board (ii) Maintain appeal. Request that the
will so notify appellant. appeal be maintained by filing a reply
(g) Extensions of time under § 1.136(a) brief as provided in § 41.41. If such a
of this title for patent applications are reply brief is accompanied by any
not applicable to the time periods set amendment, affidavit or other Evi-
dence, it shall be treated as a request
forth in this section. See § 1.136(b) of
that prosecution be reopened before the
this title for extensions of time to
examiner under paragraph (a)(2)(i) of
reply for patent applications and
this section.
§ 1.550(c) of this title for extensions of
(b) New ground of rejection. Should the
time to reply for ex parte reexamina-
Board have knowledge of any grounds
tion proceedings. not involved in the appeal for rejecting
[69 FR 50003, Aug. 12, 2004, as amended at 76 any pending claim, it may include in
FR 72298, Nov. 22, 2011] its opinion a statement to that effect
462
with its reasons for so holding, and des- comply with the order may result in
ignate such a statement as a new the sua sponte dismissal of the appeal.
ground of rejection of the claim. A new (e) Remand not final action. Whenever
ground of rejection pursuant to this a decision of the Board includes a re-
paragraph shall not be considered final mand, that decision shall not be con-
for judicial review. When the Board en- sidered final for judicial review. When
ters such a non-final decision, the ap- appropriate, upon conclusion of pro-
pellant, within two months from the ceedings on remand before the exam-
date of the decision, must exercise one iner, the Board may enter an order oth-
of the following two options with re- erwise making its decision final for ju-
spect to the new ground of rejection to dicial review.
avoid termination of the appeal as to (f) Extensions of time. Extensions of
the rejected claims: time under § 1.136(a) of this title for
(1) Reopen prosecution. Submit an ap- patent applications are not applicable
propriate amendment of the claims so to the time periods set forth in this
rejected or new Evidence relating to
section. See § 1.136(b) of this title for
the claims so rejected, or both, and
extensions of time to reply for patent
have the matter reconsidered by the
applications and § 1.550(c) of this title
examiner, in which event the prosecu-
for extensions of time to reply for ex
tion will be remanded to the examiner.
parte reexamination proceedings.
The new ground of rejection is binding
upon the examiner unless an amend- [76 FR 72299, Nov. 22, 2011]
ment or new Evidence not previously of
Record is made which, in the opinion of § 41.52 Rehearing.
the examiner, overcomes the new (a)(1) Appellant may file a single re-
ground of rejection designated in the quest for rehearing within two months
decision. Should the examiner reject of the date of the original decision of
the claims, appellant may again appeal the Board. No request for rehearing
to the Board pursuant to this subpart.
from a decision on rehearing will be
(2) Request rehearing. Request that
permitted, unless the rehearing deci-
the proceeding be reheard under § 41.52
sion so modified the original decision
by the Board upon the same Record.
as to become, in effect, a new decision,
The request for rehearing must address
and the Board states that a second re-
any new ground of rejection and state
with particularity the points believed quest for rehearing would be permitted.
to have been misapprehended or over- The request for rehearing must state
looked in entering the new ground of with particularity the points believed
rejection and also state all other to have been misapprehended or over-
grounds upon which rehearing is looked by the Board. Arguments not
sought. raised, and Evidence not previously re-
(c) Review of undesignated new ground lied upon, pursuant to §§ 41.37, 41.41, or
of rejection. Any request to seek review 41.47 are not permitted in the request
of a panel’s failure to designate a new for rehearing except as permitted by
ground of rejection in its decision must paragraphs (a)(2) through (a)(4) of this
be raised by filing a request for rehear- section. When a request for rehearing
ing as set forth in § 41.52. Failure of ap- is made, the Board shall render a deci-
pellant to timely file such a request for sion on the request for rehearing. The
rehearing will constitute a waiver of decision on the request for rehearing is
any arguments that a decision contains deemed to incorporate the earlier opin-
an undesignated new ground of rejec- ion reflecting its decision for appeal,
tion. except for those portions specifically
(d) Request for briefing and informa- withdrawn on rehearing, and is final
tion. The Board may order appellant to for the purpose of judicial review, ex-
additionally brief any matter that the cept when noted otherwise in the deci-
Board considers to be of assistance in sion on rehearing.
reaching a reasoned decision on the (2) Appellant may present a new ar-
pending appeal. Appellant will be given gument based upon a recent relevant
a time period within which to respond decision of either the Board or a Fed-
to such an order. Failure to timely eral Court.
463
§ 41.54 37 CFR Ch. I (7–1–16 Edition)
(3) New arguments responding to a this part. An inter partes reexamination

new ground of rejection designated pur- proceeding is not a contested case sub-
suant to § 41.50(b) are permitted. ject to subpart D.
(4) New arguments that the Board’s Requester means each party, other
decision contains an undesignated new than the owner, who requested that the
ground of rejection are permitted. patent undergo inter partes reexamina-
(b) Extensions of time under § 1.136(a) tion under § 1.915 of this title.
of this title for patent applications are Respondent means any requester re-
not applicable to the time period set sponding under § 41.68 to the appellant’s
forth in this section. See § 1.136(b) of brief of the owner, or the owner re-
this title for extensions of time to sponding under § 41.68 to the appellant’s
reply for patent applications and brief of any requester. No requester
§ 1.550(c) of this title for extensions of may be a respondent to the appellant
time to reply for ex parte reexamina- brief of any other requester.
tion proceedings.
§ 41.61 Notice of appeal and cross ap-
[69 FR 50003, Aug. 12, 2004, as amended at 76 peal to Board.
FR 72299, Nov. 22, 2011]
(a)(1) Upon the issuance of a Right of
§ 41.54 Action following decision. Appeal Notice under § 1.953 of this title,
After decision by the Board, jurisdic- the owner may appeal to the Board
tion over an application or patent with respect to the final rejection of
under ex parte reexamination pro- any claim of the patent by filing a no-
ceeding passes to the examiner, subject tice of appeal within the time provided
to appellant’s right of appeal or other in the Right of Appeal Notice and pay-
review, for such further action by ap- ing the fee set forth in § 41.20(b)(1).
pellant or by the examiner, as the con- (2) Upon the issuance of a Right of
dition of the application or patent Appeal Notice under § 1.953 of this title,
under ex parte reexamination pro- the requester may appeal to the Board
ceeding may require, to carry into ef- with respect to any final decision fa-
fect the decision. vorable to the patentability, including
any final determination not to make a
[76 FR 72299, Nov. 22, 2011] proposed rejection, of any original, pro-
posed amended, or new claim of the
Subpart C—Inter Partes Appeals patent by filing a notice of appeal
within the time provided in the Right
§ 41.60 Definitions. of Appeal Notice and paying the fee set
In addition to the definitions in § 41.2, forth in § 41.20(b)(1).
the following definitions apply to pro- (b)(1) Within fourteen days of service
ceedings under this subpart unless oth- of a requester’s notice of appeal under
erwise clear from the context: paragraph (a)(2) of this section and
Appellant means any party, whether upon payment of the fee set forth in
the owner or a requester, filing a no- § 41.20(b)(1), an owner who has not filed
tice of appeal or cross appeal under a notice of appeal may file a notice of
§ 41.61. If more than one party appeals cross appeal with respect to the final
or cross appeals, each appealing or rejection of any claim of the patent.
cross appealing party is an appellant (2) Within fourteen days of service of
with respect to the claims to which his an owner’s notice of appeal under para-
or her appeal or cross appeal is di- graph (a)(1) of this section and upon
rected. payment of the fee set forth in
Filing means filing with a certificate § 41.20(b)(1), a requester who has not
indicating service of the document filed a notice of appeal may file a no-
under § 1.903 of this title. tice of cross appeal with respect to any
Owner means the owner of the patent final decision favorable to the patent-
undergoing inter partes reexamination ability, including any final determina-
under § 1.915 of this title. tion not to make a proposed rejection,
Proceeding means an inter partes reex- of any original, proposed amended, or
amination proceeding. Appeal to the new claim of the patent.
Board in an ex parte reexamination pro- (c) The notice of appeal or cross ap-
ceeding is controlled by subpart B of peal in the proceeding must identify
464
the appealed claim(s) and must be of the file, including all briefs and ex-
signed by the owner, the requester, or a aminer’s answers, to the Board.
duly authorized attorney or agent. (b) If, after receipt and review of the
(d) An appeal or cross appeal, when proceeding, the Board determines that
taken, must be taken from all the re- the file is not complete or is not in
jections of the claims in a Right of Ap- compliance with the requirements of
peal Notice which the patent owner this subpart, the Board may relinquish
proposes to contest or from all the de- jurisdiction to the examiner or take
terminations favorable to patent- other appropriate action to permit
ability, including any final determina- completion of the file.
tion not to make a proposed rejection, (c) Prior to the entry of a decision on
in a Right of Appeal Notice which a re- the appeal by the Board, the Director
quester proposes to contest. Questions may sua sponte order the proceeding
relating to matters not affecting the remanded to the examiner.
merits of the invention may be re-
quired to be settled before an appeal is § 41.66 Time for filing briefs.
decided.
(e) The time periods for filing a no- (a) An appellant’s brief must be filed
tice of appeal or cross appeal may not no later than two months from the lat-
be extended. est filing date of the last-filed notice of
(f) If a notice of appeal or cross ap- appeal or cross appeal or, if any party
peal is timely filed but does not com- to the proceeding is entitled to file an
ply with any requirement of this sec- appeal or cross appeal but fails to time-
tion, appellant will be notified of the ly do so, no later than two months
reasons for non-compliance and given a from the expiration of the time for fil-
non-extendable time period within ing (by the last party entitled to do so)
which to file an amended notice of ap- such notice of appeal or cross appeal.
peal or cross appeal. If the appellant The time for filing an appellant’s brief
does not then file an amended notice of or an amended appellant’s brief may
appeal or cross appeal within the set not be extended.
time period, or files a notice which (b) Once an appellant’s brief has been
does not overcome all the reasons for properly filed, any brief must be filed
non-compliance stated in the notifica- by respondent within one month from
tion of the reasons for non-compliance, the date of service of the appellant’s
that appellant’s appeal or cross appeal brief. The time for filing a respondent’s
will stand dismissed. brief or an amended respondent’s brief
may not be extended.
§ 41.63 Amendments and affidavits or
other evidence after appeal. (c) The examiner will consider both
the appellant’s and respondent’s briefs
(a) Amendments filed after the date and may prepare an examiner’s answer
of filing an appeal pursuant to § 41.61 under § 41.69.
canceling claims may be admitted (d) Any appellant may file a rebuttal
where such cancellation does not affect
brief under § 41.71 within one month of
the scope of any other pending claim in
the date of the examiner’s answer. The
the proceeding.
time for filing a rebuttal brief or an
(b) All other amendments filed after
amended rebuttal brief may not be ex-
the date of filing an appeal pursuant to
tended.
§ 41.61 will not be admitted except as
permitted by § 41.77(b)(1). (e) No further submission will be con-
(c) Affidavits or other evidence filed sidered and any such submission will
after the date of filing an appeal pursu- be treated in accordance with § 1.939 of
ant to § 41.61 will not be admitted ex- this title.
cept as permitted by reopening pros-
§ 41.67 Appellant’s brief.
ecution under § 41.77(b)(1).
(a)(1) Appellant(s) may once, within
§ 41.64 Jurisdiction over appeal in time limits for filing set forth in § 41.66,
inter partes reexamination. file a brief and serve the brief on all
(a) Jurisdiction over the proceeding other parties to the proceeding in ac-
passes to the Board upon transmittal cordance with § 1.903 of this title.
465
§ 41.67 37 CFR Ch. I (7–1–16 Edition)
(2) The brief must be signed by the acters. For each independent claim in-
appellant, or the appellant’s duly au- volved in the appeal and for each de-
thorized attorney or agent and must be pendent claim argued separately under
accompanied by the requisite fee set the provisions of paragraph (c)(1)(vii)
forth in § 41.20(b)(2). of this section, every means plus func-
(b) An appellant’s appeal shall stand tion and step plus function as per-
dismissed upon failure of that appel- mitted by 35 U.S.C. 112(f), must be iden-
lant to file an appellant’s brief, accom- tified and the structure, material, or
panied by the requisite fee, within the acts described in the specification as
time allowed under § 41.66(a). corresponding to each claimed function
(c)(1) The appellant’s brief shall con- must be set forth with reference to the
tain the following items under appro- specification by page and line number,
priate headings and in the order indi- and to the drawing, if any, by reference
cated in paragraphs (c)(1)(i) through characters.
(c)(1)(xi) of this section. (vi) Issues to be reviewed on appeal. A
(i) Real party in interest. A statement concise statement of each issue pre-
identifying by name the real party in sented for review. No new ground of re-
interest. jection can be proposed by a third
(ii) Related appeals, interferences, and party requester appellant, unless such
trials. A statement identifying by appli- ground was withdrawn by the examiner
cation, patent, appeal, interference, or during the prosecution of the pro-
trial number all other prior and pend- ceeding, and the third party requester
ing appeals, interferences, trials before has not yet had an opportunity to pro-
the Board, or judicial proceedings pose it as a third party requester pro-
known to appellant, the appellant’s posed ground of rejection.
legal representative, or assignee which (vii) Argument. The contentions of ap-
may be related to, directly affect or be pellant with respect to each issue pre-
directly affected by or have a bearing sented for review in paragraph (c)(1)(vi)
on the Board’s decision in the pending of this section, and the basis therefor,
appeal. Copies of any decisions ren- with citations of the statutes, regula-
dered by a court or the Board in any tions, authorities, and parts of the
proceeding identified under this para- record relied on. Any arguments or au-
graph must be included in an appendix thorities not included in the brief per-
as required by paragraph (c)(1)(xi) of mitted under this section or §§ 41.68 and
this section. 41.71 will be refused consideration by
(iii) Status of claims. A statement of the Board, unless good cause is shown.
the status of all the claims in the pro- Each issue must be treated under a sep-
ceeding (e.g., rejected, allowed or con- arate heading. If the appellant is the
firmed, withdrawn, objected to, can- patent owner, for each ground of rejec-
celed). If the appellant is the owner, tion in the Right of Appeal Notice
the appellant must also identify the re- which appellant contests and which ap-
jected claims whose rejection is being plies to two or more claims, the claims
appealed. If the appellant is a re- may be argued separately or as a
quester, the appellant must identify group. When multiple claims subject to
the claims that the examiner has made the same ground of rejection are ar-
a determination favorable to patent- gued as a group by appellant, the Board
ability, which determination is being may select a single claim from the
appealed. group of claims that are argued to-
(iv) Status of amendments. A state- gether to decide the appeal with re-
ment of the status of any amendment spect to the group of claims as to the
filed subsequent to the close of pros- ground of rejection on the basis of the
ecution. selected claim alone. Notwithstanding
(v) Summary of claimed subject matter. any other provision of this paragraph,
A concise explanation of the subject the failure of appellant to separately
matter defined in each of the inde- argue claims which appellant has
pendent claims involved in the appeal, grouped together shall constitute a
which shall refer to the specification waiver of any argument that the Board
by column and line number, and to the must consider the patentability of any
drawing(s), if any, by reference char- grouped claim separately. Any claim
466
argued separately should be placed come all the reasons for non-compli-
under a subheading identifying the ance stated in the notification, that
claim by number. Claims argued as a appellant’s appeal will stand dismissed.
group should be placed under a sub-
heading identifying the claims by num-
FR 46630, Aug. 6, 2012]
ber. A statement which merely points
out what a claim recites will not be § 41.68 Respondent’s brief.
considered an argument for separate
patentability of the claim. (a)(1) Respondent(s) in an appeal may
(viii) Claims appendix. An appendix once, within the time limit for filing
containing a copy of the claims to be set forth in § 41.66, file a respondent
reviewed on appeal. brief and serve the brief on all parties
(ix) Evidence appendix. An appendix in accordance with § 1.903 of this title.
containing copies of any evidence sub- (2) The brief must be signed by the
mitted pursuant to §§ 1.130, 1.131, or party, or the party’s duly authorized
1.132 of this title or of any other evi- attorney or agent, and must be accom-
dence entered by the examiner and re- panied by the requisite fee set forth in
lied upon by appellant in the appeal, § 41.20(b)(2).
along with a statement setting forth (3) The respondent brief shall be lim-
where in the record that evidence was ited to issues raised in the appellant
entered in the record by the examiner. brief to which the respondent brief is
Reference to unentered evidence is not directed.
permitted in the brief. See § 41.63 for (4) A requester’s respondent brief
treatment of evidence submitted after may not address any brief of any other
appeal. This appendix may also include requester.
copies of the evidence relied upon by (b)(1) The respondent brief shall con-
the examiner in any ground of rejec- tain the following items under appro-
tion to be reviewed on appeal. priate headings and in the order here
(x) Related proceedings appendix. An
indicated, and may include an appendix
appendix containing copies of decisions
containing only those portions of the
rendered by a court or the Board in any
record on which reliance has been
proceeding identified pursuant to para-
made.
graph (c)(1)(ii) of this section.
(xi) Certificate of service. A certifi- (i) Real Party in Interest. A statement
cation that a copy of the brief has been identifying by name the real party in
served in its entirety on all other par- interest.
ties to the reexamination proceeding. (ii) Related Appeals, Interferences, and
The names and addresses of the parties trials. A statement identifying by appli-
served must be indicated. cation, patent, appeal, interference, or
(2) A brief shall not include any new trial number all other prior and pend-
or non-admitted amendment, or any ing appeals, interferences or judicial
new or non-admitted affidavit or other proceedings known to respondent, the
evidence. See § 1.116 of this title for respondent’s legal representative, or
amendments, affidavits or other evi- assignee which may be related to, di-
dence filed after final action but before rectly affect or be directly affected by
or on the same date of filing an appeal or have a bearing on the Board’s deci-
and § 41.63 for amendments, affidavits sion in the pending appeal. Copies of
or other evidence after the date of fil- any decisions rendered by a court or
ing the appeal. the Board in any proceeding identified
(d) If a brief is filed which does not under this paragraph must be included
comply with all the requirements of in an appendix as required by para-
paragraph (a) and paragraph (c) of this graph (b)(1)(ix) of this section.
section, appellant will be notified of (iii) Status of claims. A statement ac-
the reasons for non-compliance and cepting or disputing appellant’s state-
given a non-extendable time period ment of the status of claims. If appel-
within which to file an amended brief. lant’s statement of the status of claims
If appellant does not file an amended is disputed, the errors in appellant’s
brief within the set time period, or files statement must be specified with par-
an amended brief which does not over- ticularity.
467
§ 41.69 37 CFR Ch. I (7–1–16 Edition)
(iv) Status of amendments. A state- proceeding identified pursuant to para-

ment accepting or disputing appel- graph (b)(1)(ii) of this section.
lant’s statement of the status of (x) Certificate of service. A certifi-
amendments. If appellant’s statement cation that a copy of the respondent
of the status of amendments is dis- brief has been served in its entirety on
puted, the errors in appellant’s state- all other parties to the reexamination
ment must be specified with particu- proceeding. The names and addresses of
larity. the parties served must be indicated.
(v) Summary of claimed subject matter. (2) A respondent brief shall not in-
A statement accepting or disputing ap- clude any new or non-admitted amend-
pellant’s summary of the subject mat- ment, or any new or non-admitted affi-
ter defined in each of the independent davit or other evidence. See § 1.116 of
claims involved in the appeal. If appel- this title for amendments, affidavits or
lant’s summary of the subject matter other evidence filed after final action
is disputed, the errors in appellant’s but before or on the same date of filing
summary must be specified. an appeal and § 41.63 for amendments,
(vi) Issues to be reviewed on appeal. A affidavits or other evidence filed after
statement accepting or disputing ap- the date of filing the appeal.
pellant’s statement of the issues pre- (c) If a respondent brief is filed which
sented for review. If appellant’s state- does not comply with all the require-
ment of the issues presented for review ments of paragraph (a) and paragraph
is disputed, the errors in appellant’s (b) of this section, respondent will be
statement must be specified. A counter notified of the reasons for non-compli-
statement of the issues for review may ance and given a non-extendable time
be made. No new ground of rejection period within which to file an amended
can be proposed by a requester respond- brief. If respondent does not file an
ent. amended respondent brief within the
(vii) Argument. A statement accept- set time period, or files an amended re-
ing or disputing the contentions of ap- spondent brief which does not over-
pellant with each of the issues pre- come all the reasons for non-compli-
sented by the appellant for review. If a ance stated in the notification, the re-
contention of the appellant is disputed, spondent brief and any amended re-
the errors in appellant’s argument spondent brief by that respondent will
must be specified, stating the basis not be considered.
therefor, with citations of the statutes, [69 FR 50003, Aug. 12, 2004, as amended at 77
regulations, authorities, and parts of FR 46631, Aug. 6, 2012]
the record relied on. Each issue must
be treated under a separate heading. § 41.69 Examiner’s answer.
An argument may be made with each (a) The primary examiner may, with-
of the issues stated in the counter in such time as directed by the Direc-
statement of the issues, with each tor, furnish a written answer to the
counter-stated issue being treated owner’s and/or requester’s appellant
under a separate heading. brief or respondent brief including, as
(viii) Evidence appendix. An appendix may be necessary, such explanation of
containing copies of any evidence sub- the invention claimed and of the ref-
mitted pursuant to §§ 1.130, 1.131, or erences relied upon, the grounds of re-
1.132 of this title or of any other evi- jection, and the reasons for patent-
dence entered by the examiner and re- ability, including grounds for not
lied upon by respondent in the appeal, adopting any proposed rejection. A
along with a statement setting forth copy of the answer shall be supplied to
where in the record that evidence was the owner and all requesters. If the pri-
entered in the record by the examiner. mary examiner determines that the ap-
Reference to unentered evidence is not peal does not comply with the provi-
permitted in the respondent’s brief. See sions of §§ 41.61, 41.66, 41.67 and 41.68 or
§ 41.63 for treatment of evidence sub- does not relate to an appealable action,
mitted after appeal. the primary examiner shall make such
(ix) Related proceedings appendix. An determination of record.
appendix containing copies of decisions (b) An examiner’s answer may not in-
rendered by a court or the Board in any clude a new ground of rejection.
468
(c) An examiner’s answer may not in- brief during the one-month period, or
clude a new determination not to make files an amended rebuttal brief which
a proposed rejection of a claim. does not overcome all the reasons for
(d) Any new ground of rejection, or non-compliance stated in the notifica-
any new determination not to make a tion, that appellant’s rebuttal brief and
proposed rejection, must be made in an any amended rebuttal brief by that ap-
Office action reopening prosecution. pellant will not be considered.
§ 41.71 Rebuttal brief. § 41.73 Oral hearing.
(a) Within one month of the exam- (a) An oral hearing should be re-
iner’s answer, any appellant may once quested only in those circumstances in
file a rebuttal brief. which an appellant or a respondent
(b)(1) The rebuttal brief of the owner considers such a hearing necessary or
may be directed to the examiner’s an- desirable for a proper presentation of
swer and/or any respondent brief. the appeal. An appeal decided on the
(2) The rebuttal brief of the owner briefs without an oral hearing will re-
shall not include any new or non-ad- ceive the same consideration by the
mitted amendment, or an affidavit or Board as an appeal decided after an
other evidence. See § 1.116 of this title oral hearing.
for amendments, affidavits or other (b) If an appellant or a respondent de-
evidence filed after final action but be- sires an oral hearing, he or she must
fore or on the same date of filing an ap- file, as a separate paper captioned
peal and § 41.63 for amendments, affida- ‘‘REQUEST FOR ORAL HEARING,’’ a
vits or other evidence filed after the written request for such hearing ac-
date of filing the appeal. companied by the fee set forth in
(c)(1) The rebuttal brief of any re- § 41.20(b)(3) within two months after the
quester may be directed to the exam- date of the examiner’s answer. The
iner’s answer and/or the respondent time for requesting an oral hearing
brief of the owner. may not be extended. The request must
(2) The rebuttal brief of a requester include a certification that a copy of
may not be directed to the respondent the request has been served in its en-
brief of any other requester. tirety on all other parties to the pro-
(3) No new ground of rejection can be ceeding. The names and addresses of
proposed by a requester. the parties served must be indicated.
(4) The rebuttal brief of a requester (c) If no request and fee for oral hear-
shall not include any new or non-ad- ing have been timely filed by appellant
mitted affidavit or other evidence. See or respondent as required by paragraph
§ 1.116(d) of this title for affidavits or (b) of this section, the appeal will be
other evidence filed after final action assigned for consideration and decision
but before or on the same date of filing on the briefs without an oral hearing.
an appeal and § 41.63(c) for affidavits or (d) If appellant or respondent has
other evidence filed after the date of complied with all the requirements of
filing the appeal. paragraph (b) of this section, a hearing
(d) The rebuttal brief must include a date will be set, and notice given to the
certification that a copy of the rebut- owner and all requesters. If an oral
tal brief has been served in its entirety hearing is held, an oral argument may
on all other parties to the proceeding. be presented by, or on behalf of, the
The names and addresses of the parties primary examiner if considered desir-
served must be indicated. able by either the primary examiner or
(e) If a rebuttal brief is timely filed the Board. The notice shall set a non-
under paragraph (a) of this section but extendable period within which all re-
does not comply with all the require- quests for oral hearing shall be sub-
ments of paragraphs (a) through (d) of mitted by any other party to the ap-
this section, appellant will be notified peal desiring to participate in the oral
of the reasons for non-compliance and hearing. A hearing will be held as stat-
provided with a non-extendable period ed in the notice, and oral argument
of one month within which to file an will be limited to thirty minutes for
amended rebuttal brief. If the appel- each appellant or respondent who has
lant does not file an amended rebuttal requested an oral hearing, and twenty
469
§ 41.77 37 CFR Ch. I (7–1–16 Edition)
minutes for the primary examiner un- rejection proposed by a requester, the
less otherwise ordered. No appellant or Board shall set forth in the opinion in
respondent will be permitted to par- support of its decision a new ground of
ticipate in an oral hearing unless he or rejection; or should the Board have
she has requested an oral hearing and knowledge of any grounds not raised in
submitted the fee set forth in the appeal for rejecting any pending
§ 41.20(b)(3). claim, it may include in its opinion a
(e)(1) At the oral hearing, each appel- statement to that effect with its rea-
lant and respondent may only rely on sons for so holding, which statement
evidence that has been previously en- shall constitute a new ground of rejec-
tered and considered by the primary tion of the claim. Any decision which
examiner and present argument that includes a new ground of rejection pur-
has been relied upon in the briefs ex- suant to this paragraph shall not be
cept as permitted by paragraph (e)(2) of considered final for judicial review.
this section. The primary examiner When the Board makes a new ground of
may only rely on argument and evi- rejection, the owner, within one month
dence relied upon in an answer except from the date of the decision, must ex-
as permitted by paragraph (e)(2) of this ercise one of the following two options
section. The Board will determine the with respect to the new ground of re-
order of the arguments presented at jection to avoid termination of the ap-
the oral hearing. peal proceeding as to the rejected
(2) Upon a showing of good cause, ap- claim:
pellant, respondent and/or the primary
(1) Reopen prosecution. The owner
examiner may rely on a new argument
may file a response requesting reopen-
based upon a recent relevant decision
ing of prosecution before the examiner.
of either the Board or a Federal Court.
Such a response must be either an
(f) Notwithstanding the submission
amendment of the claims so rejected or
of a request for oral hearing complying
new evidence relating to the claims so
with this rule, if the Board decides that
rejected, or both.
a hearing is not necessary, the Board
will so notify the owner and all re- (2) Request rehearing. The owner may
questers. request that the proceeding be reheard
under § 41.79 by the Board upon the
§ 41.77 Decisions and other actions by same record. The request for rehearing
the Board. must address any new ground of rejec-
(a) The Patent Trial and Appeal tion and state with particularity the
Board, in its decision, may affirm or points believed to have been misappre-
reverse each decision of the examiner hended or overlooked in entering the
on all issues raised on each appealed new ground of rejection and also state
claim, or remand the reexamination all other grounds upon which rehearing
proceeding to the examiner for further is sought.
consideration. The reversal of the ex- (c) Where the owner has filed a re-
aminer’s determination not to make a sponse requesting reopening of prosecu-
rejection proposed by the third party tion under paragraph (b)(1) of this sec-
requester constitutes a decision ad- tion, any requester, within one month
verse to the patentability of the claims of the date of service of the owner’s re-
which are subject to that proposed response, may once file comments on the
jection which will be set forth in the response. Such written comments must
decision of the Patent Trial and Appeal be limited to the issues raised by the
Board as a new ground of rejection Board’s opinion reflecting its decision
under paragraph (b) of this section. The and the owner’s response. Any re-
affirmance of the rejection of a claim quester that had not previously filed
on any of the grounds specified con- an appeal or cross appeal and is seek-
stitutes a general affirmance of the de- ing under this subsection to file com-
cision of the examiner on that claim, ments or a reply to the comments is
except as to any ground specifically re- subject to the appeal and brief fees
versed. under § 41.20(b)(1) and (2), respectively,
(b) Should the Board reverse the ex- which must accompany the comments
aminer’s determination not to make a or reply.
470
(d) Following any response by the paragraphs (c) and (e) of this section
owner under paragraph (b)(1) of this may not be extended.
section and any written comments
from a requester under paragraph (c) of FR 46631, Aug. 6, 2012]
this section, the proceeding will be re-
manded to the examiner. The state- § 41.79 Rehearing.
ment of the Board shall be binding
(a) Parties to the appeal may file a
upon the examiner unless an amend- request for rehearing of the decision
ment or new evidence not previously of within one month of the date of:
record is made which, in the opinion of (1) The original decision of the Board
the examiner, overcomes the new under § 41.77(a),
ground of rejection stated in the deci- (2) The original § 41.77(b) decision
sion. The examiner will consider any under the provisions of § 41.77(b)(2),
owner response under paragraph (b)(1)
(3) The expiration of the time for the
of this section and any written com- owner to take action under § 41.77(b)(2),
ments by a requester under paragraph or
(c) of this section and issue a deter-
(4) The new decision of the Board
mination that the rejection is main-
under § 41.77(f).
tained or has been overcome.
(b)(1) The request for rehearing must
(e) Within one month of the exam- state with particularity the points be-
iner’s determination pursuant to para- lieved to have been misapprehended or
graph (d) of this section, the owner or overlooked in rendering the Board’s
any requester may once submit com- opinion reflecting its decision. Argu-
ments in response to the examiner’s de- ments not raised in the briefs before
termination. Within one month of the the Board and evidence not previously
date of service of comments in re- relied upon in the briefs are not per-
sponse to the examiner’s determina- mitted in the request for rehearing ex-
tion, the owner and any requesters may cept as permitted by paragraphs (b)(2)
file a reply to the comments. No re- and (b)(3) of this section.
quester reply may address the com- (2) Upon a showing of good cause, ap-
ments of any other requester reply. pellant and/or respondent may present
Any requester that had not previously a new argument based upon a recent
filed an appeal or cross appeal and is relevant decision of either the Board or
seeking under this subsection to file a Federal Court.
comments or a reply to the comments (3) New arguments responding to a
is subject to the appeal and brief fees new ground of rejection made pursuant
under § 41.20(b)(1) and (2), respectively, to § 41.77(b) are permitted.
which must accompany the comments (c) Within one month of the date of
or reply. service of any request for rehearing
(f) After submission of any comments under paragraph (a) of this section, or
and any reply pursuant to paragraph any further request for rehearing under
(e) of this section, or after time has ex- paragraph (d) of this section, the owner
pired, the proceeding will be returned and all requesters may once file com-
to the Board which shall reconsider the ments in opposition to the request for
matter and issue a new decision. The rehearing or the further request for re-
new decision is deemed to incorporate hearing. The comments in opposition
the earlier decision, except for those must be limited to the issues raised in
portions specifically withdrawn. the request for rehearing or the further
(g) The time period set forth in para- request for rehearing.
graph (b) of this section is subject to (d) If a party to an appeal files a re-
the extension of time provisions of quest for rehearing under paragraph (a)
§ 1.956 of this title when the owner is of this section, or a further request for
responding under paragraph (b)(1) of rehearing under this section, the Board
this section. The time period set forth shall render a decision on the request
in paragraph (b) of this section may for rehearing. The decision on the re-
not be extended when the owner is request for rehearing is deemed to incor-
sponding under paragraph (b)(2) of this porate the earlier opinion reflecting its
section. The time periods set forth in decision for appeal, except for those
471
§ 41.81 37 CFR Ch. I (7–1–16 Edition)
portions specifically withdrawn on re- (2) Publishing the notice in the Offi-
hearing and is final for the purpose of cial Gazette of the United States Patent
judicial review, except when noted oth- and Trademark Office.
erwise in the decision on rehearing. If
the Board opinion reflecting its deci- § 41.102 Completion of examination.
sion on rehearing becomes, in effect, a Before a contested case is initiated,
new decision, and the Board so indi- except as the Board may otherwise au-
cates, then any party to the appeal thorize, for each involved application
may, within one month of the new de- and patent:
cision, file a further request for rehear- (a) Examination or reexamination
ing of the new decision under this sub- must be completed, and
section. Such further request for re- (b) There must be at least one claim
hearing must comply with paragraph that:
(b) of this section. (1) Is patentable but for a judgment
(e) The times for requesting rehear- in the contested case, and
ing under paragraph (a) of this section, (2) Would be involved in the con-
for requesting further rehearing under tested case.
paragraph (c) of this section, and for
submitting comments under paragraph § 41.103 Jurisdiction over involved
(b) of this section may not be extended. files.
The Board acquires jurisdiction over
§ 41.81 Action following decision. any involved file when the Board initi-
The parties to an appeal to the Board ates a contested case. Other pro-
may not appeal to the U.S. Court of ceedings for the involved file within
Appeals for the Federal Circuit under the Office are suspended except as the
§ 1.983 of this title until all parties’ Board may order.
rights to request rehearing have been § 41.104 Conduct of contested case.
exhausted, at which time the decision
of the Board is final and appealable by (a) The Board may determine a prop-
any party to the appeal to the Board. er course of conduct in a proceeding for
any situation not specifically covered
by this part and may enter non-final
Subpart D—Contested Cases orders to administer the proceeding.
§ 41.100 Definitions. (b) An administrative patent judge
may waive or suspend in a proceeding
In addition to the definitions in § 41.2, the application of any rule in this sub-
the following definitions apply to pro- part, subject to such conditions as the
ceedings under this subpart: administrative patent judge may im-
Business day means a day other than pose.
a Saturday, Sunday, or Federal holiday (c) Times set in this subpart are de-
within the District of Columbia. faults. In the event of a conflict be-
Involved means the Board has de- tween a time set by rule and a time set
clared the patent application, patent, by order, the time set by order is con-
or claim so described to be a subject of trolling. Action due on a day other
the contested case. than a business day may be completed
on the next business day unless the
§ 41.101 Notice of proceeding. Board expressly states otherwise.
(a) Notice of a contested case will be
sent to every party to the proceeding. § 41.106 Filing and service.
The entry of the notice initiates the (a) General format requirements. (1)
proceeding. The paper used for filings must be du-
(b) When the Board is unable to pro- rable and white. A party must choose
vide actual notice of a contested case to file on either A4-sized paper or 81⁄2
on a party through the correspondence inch × 11 inch paper except in the case
address of record for the party, the of exhibits that require a larger size in
Board may authorize other modes of order to preserve details of the origi-
notice, including: nal. A party may not switch between
(1) Sending notice to another address paper sizes in a single proceeding. Only
associated with the party, or one side of the paper may be used.
472
(2) In papers, including affidavits, filed as of the stamped date of receipt

created for the proceeding: at the Board.
(i) Markings must be in black ink or (2) Other modes of filing. The Board
must otherwise provide an equivalently may authorize other modes of filing,
permanent, dark, high-contrast image including electronic filing and hand fil-
on the paper. The quality of printing ing, and may set conditions for the use
must be equivalent to the quality proof such other modes.
duced by a laser printer. Either a pro- (e) Service. (1) Papers filed with the
portional or monospaced font may be Board, if not previously served, must
used, but the proportional font must be be served simultaneously on every op-
12-point or larger and a monospaced posing party except as the Board ex-
font must not contain more than 4 pressly directs.
characters per centimeter (10 char- (2) If a party is represented by coun-
acters per inch). Case names must be sel, service must be on counsel.
underlined or italicized. (3) Service must be by Priority Mail
Express® or by means at least as fast
(ii) Double spacing must be used ex-
and reliable as Priority Mail Express®.
cept in headings, tables of contents, ta-
Electronic service is not permitted
bles of authorities, indices, signature
without Board authorization.
blocks, and certificates of service.
(4) The date of service does not count
Block quotations may be single-spaced in computing the time for responding.
and must be indented. Margins must be (f) Certificate of service. (1) Papers
at least 2.5 centimeters (1 inch) on all other than exhibits must include a cer-
sides. tificate of service as a separate page at
(b) Papers other than exhibits—(1) the end of each paper that must be
Cover sheet. (i) The cover sheet must in- served on an opposing party.
clude the caption the Board specifies (2) Exhibits must be accompanied by
for the proceeding, a header indicating a certificate of service, but a single
the party and contact information for certificate may accompany any group
the party, and a title indicating the se- of exhibits submitted together.
quence and subject of the paper. For (3) A certificate of service must
example, ‘‘JONES MOTION 2, For ben- state:
efit of an earlier application’’. (i) The date and manner of service,
(ii) If the Board specifies a color (ii) The name and address of every
other than white for the cover sheet, person served, and
the cover sheet must be that color. (iii) For exhibits filed as a group, the
(2) Papers must have two 0.5 cm (1⁄4 name and number of each exhibit
inch) holes with centers 1 cm (1⁄2 inch) served.
from the top of the page and 7 cm (2 3⁄4 (4) A certificate made by a person
inch) apart, centered horizontally on other than a registered patent practi-
the page. tioner must be in the form of an affi-
(3) Incorporation by reference; combined davit.
papers. Arguments must not be incor- [69 FR 50003, Aug. 12, 2004, as amended at 79
porated by reference from one paper FR 63043, Oct. 22, 2014]
into another paper. Combined motions,
oppositions, replies, or other combined § 41.108 Lead counsel.
papers are not permitted. (a) A party may be represented by
(4) Exhibits. Additional requirements counsel. The Board may require a
for exhibits appear in § 41.154(c). party to appoint a lead counsel. If
(c) Working copy. Every paper filed counsel is not of record in a party’s in-
must be accompanied by a working volved application or patent, then a
copy marked ‘‘APJ Copy’’. power of attorney for that counsel for
(d) Specific filing forms—(1) Filing by the party’s involved application or pat-
mail. A paper filed using the Priority ent must be filed with the notice re-
Mail Express® service of the United quired in paragraph (b) of this section.
States Postal Service will be deemed to (b) Within 14 days of the initiation of
be filed as of ‘‘date accepted’’ on the each contested case, each party must
Priority Mail Express® mailing label; file a separate notice identifying its
otherwise, mail will be deemed to be counsel, if any, and providing contact
473
§ 41.109 37 CFR Ch. I (7–1–16 Edition)
information for each counsel identified braces ({ }) where each limitation is

or, if the party has no counsel, then for shown in the drawing or sequence.
the party. Contact information must, (2) For each involved claim that con-
at a minimum, include: tains a means-plus-function or step-
(1) A mailing address; plus-function limitation in the form
(2) An address for courier delivery permitted under 35 U.S.C. 112(f), file an
when the mailing address is not avail- annotated copy of the claim indicating
able for such delivery (for example, in bold face between braces ({ }) the
when the mailing address is a Post Of- specific portions of the specification
fice box); that describe the structure, material,
(3) A telephone number; or acts corresponding to each claimed
(4) A facsimile number; and function.
(5) An electronic mail address. (c) Any motion to add or amend a
(c) A party must promptly notify the claim must include:
Board of any change in the contact in- (1) A clean copy of the claim,
formation required in paragraph (b) of (2) A claim chart showing where the
this section. disclosure of the patent or application
provides written description of the sub-
§ 41.109 Access to and copies of Office ject matter of the claim, and
records. (3) Where applicable, a copy of the
(a) Request for access or copies. Any re- claims annotated according to para-
quest from a party for access to or cop- graph (b) of this section.
ies of Office records directly related to [69 FR 50003, Aug. 12, 2004, as amended at 77
a contested case must be filed with the FR 46631, Aug. 6, 2012]
Board. The request must precisely
identify the records and in the case of § 41.120 Notice of basis for relief.
copies include the appropriate fee set (a) The Board may require a party to
under § 1.19(b) of this title. provide a notice stating the relief it re-
(b) Authorization of access and copies. quests and the basis for its entitlement
Access and copies will ordinarily only to relief. The Board may provide for
be authorized for the following records: the notice to be maintained in con-
(1) The application file for an in- fidence for a limited time.
volved patent; (b) Effect. If a notice under paragraph
(2) An involved application; and (a) of this section is required, a party
(3) An application for which a party will be limited to filing substantive
has been accorded benefit under sub- motions consistent with the notice.
part E of this part. Ambiguities in the notice will be con-
(c) Missing or incomplete copies. If a strued against the party. A notice is
party does not receive a complete copy not evidence except as an admission by
of a record within 21 days of the au- a party-opponent.
thorization, the party must promptly (c) Correction. A party may move to
notify the Board. correct its notice. The motion should
be filed promptly after the party be-
§ 41.110 Filing claim information. comes aware of the basis for the correc-
(a) Clean copy of claims. Within 14 tion. A correction filed after the time
days of the initiation of the pro- set for filing notices will only be en-
ceeding, each party must file a clean tered if entry would serve the interests
copy of its involved claims and, if a of justice.
biotechnology material sequence is a
limitation, a clean copy of the se- § 41.121 Motions.
quence. (a) Types of motions—(1) Substantive
(b) Annotated copy of claims. Within 28 motions. Consistent with the notice of
days of the initiation of the pro- requested relief, if any, and to the ex-
ceeding, each party must: tent the Board authorizes, a party may
(1) For each involved claim having a file a motion:
limitation that is illustrated in a draw- (i) To redefine the scope of the con-
ing or biotechnology material se- tested case,
quence, file an annotated copy of the (ii) To change benefit accorded for
claim indicating in bold face between the contested subject matter, or
474
(iii) For judgment in the contested § 41.122 Oppositions and replies.

case. (a) Oppositions and replies must com-
(2) Responsive motions. The Board may ply with the content requirements for
authorize a party to file a motion to motions and must include a statement
amend or add a claim, to change identifying material facts in dispute.
inventorship, or otherwise to cure a de- Any material fact not specifically de-
fect raised in a notice of requested re- nied shall be considered admitted.
lief or in a substantive motion. (b) All arguments for the relief re-
(3) Miscellaneous motions. Any request quested in a motion must be made in
for relief other than a substantive or the motion. A reply may only respond
responsive motion must be filed as a to arguments raised in the cor-
miscellaneous motion. responding opposition.
(b) Burden of proof. The party filing
the motion has the burden of proof to § 41.123 Default filing times.
establish that it is entitled to the re- (a) A motion, other than a miscella-
quested relief. neous motion, may only be filed ac-
(c) Content of motions; oppositions and cording to a schedule the Board sets.
replies. (1) Each motion must be filed as The default times for acting are:
a separate paper and must include: (1) An opposition is due 30 days after
service of the motion.
(i) A statement of the precise relief
(2) A reply is due 30 days after service
requested,
of the opposition.
(ii) A statement of material facts (3) A responsive motion is due 30 days
(see paragraph (d) of this section), and after the service of the motion.
(iii) A full statement of the reasons (b) Miscellaneous motions. (1) If no
for the relief requested, including a de- time for filing a specific miscellaneous
tailed explanation of the significance motion is provided in this part or in a
of the evidence and the governing law, Board order:
rules, and precedent. (i) The opposing party must be con-
(2) Compliance with rules. Where a rule sulted prior to filing the miscellaneous
in part 1 of this title ordinarily governs motion, and
the relief sought, the motion must (ii) If an opposing party plans to op-
make any showings required under pose the miscellaneous motion, the
that rule in addition to any showings movant may not file the motion with-
required in this part. out Board authorization. Such author-
(3) The Board may order additional ization should ordinarily be obtained
showings or explanations as a condi- through a telephone conference includ-
tion for filing a motion. ing the Board and every other party to
the proceeding. Delay in seeking relief
(d) Statement of material facts. (1) Each
may justify a denial of the motion.
material fact shall be set forth as a
(2) An opposition may not be filed
separate numbered sentence with spe-
without authorization. The default
cific citations to the portions of the
times for acting are:
record that support the fact. (i) An opposition to a miscellaneous
(2) The Board may require that the motion is due five business days after
statement of material facts be sub- service of the motion.
mitted as a separate paper. (ii) A reply to a miscellaneous motion
(e) Claim charts. Claim charts must be opposition is due three business days
used in support of any paper requiring after service of the opposition.
the comparison of a claim to some- (c) Exhibits. Each exhibit must be
thing else, such as another claim, prior filed and served with the first paper in
art, or a specification. Claim charts which it is cited except as the Board
must accompany the paper as an ap- may otherwise order.
pendix. Claim charts are not a sub-
stitute for appropriate argument and § 41.124 Oral argument.
explanation in the paper. (a) Request for oral argument. A party
(f) The Board may order briefing on may request an oral argument on an
any issue that could be raised by mo- issue raised in a paper within five busi-
tion. ness days of the filing of the paper. The
475
§ 41.125 37 CFR Ch. I (7–1–16 Edition)
request must be filed as a separate (i) All matters the party believes to
paper and must specify the issues to be have been misapprehended or over-
considered. looked, and
(b) Copies for panel. If an oral argu- (ii) The place where the matter was
ment is set for a panel, the movant on previously addressed in a motion, oppo-
any issue to be argued must provide sition, or reply.
three working copies of the motion, the (4) Opposition; reply. Neither an oppo-
opposition, and the reply. Each party is sition nor a reply to a request for re-
responsible for providing three working hearing may be filed without Board au-
copies of its exhibits relating to the thorization.
motion. (5) Panel rehearing. If a decision is not
(c) Length of argument. If a request a panel decision, the party requesting
for oral argument is granted, each rehearing may request that a panel re-
party will have a total of 20 minutes to hear the decision. A panel rehearing a
present its arguments, including any procedural decision will review the de-
time for rebuttal. cision for an abuse of discretion.
(d) Demonstrative exhibits must be
served at least five business days be- § 41.126 Arbitration.
fore the oral argument and filed no (a) Parties to a contested case may
later than the time of the oral argu- resort to binding arbitration to deter-
ment. mine any issue in a contested case. The
(e) Transcription. The Board encour- Office is not a party to the arbitration.
ages the use of a transcription service The Board is not bound and may inde-
at oral arguments but, if such a service pendently determine questions of pat-
is to be used, the Board must be noti- entability, jurisdiction, and Office
fied in advance to ensure adequate fa- practice.
cilities are available and a transcript (b) The Board will not authorize arbi-
must be filed with the Board promptly tration unless:
after the oral argument. (1) It is to be conducted according to
Title 9 of the United States Code.
§ 41.125 Decision on motions. (2) The parties notify the Board in
(a) Order of consideration. The Board writing of their intention to arbitrate.
may take up motions for decisions in (3) The agreement to arbitrate:
any order, may grant, deny, or dismiss (i) Is in writing,
any motion, and may take such other (ii) Specifies the issues to be arbi-
action appropriate to secure the just, trated,
speedy, and inexpensive determination (iii) Names the arbitrator, or pro-
of the proceeding. A decision on a mo- vides a date not more than 30 days
tion may include deferral of action on after the execution of the agreement
an issue until a later point in the pro- for the selection of the arbitrator, and
ceeding. (iv) Provides that the arbitrator’s
(b) Interlocutory decisions. A decision award shall be binding on the parties
on motions without a judgment is not and that judgment thereon can be en-
final for the purposes of judicial re- tered by the Board.
view. A panel decision on an issue will (4) A copy of the agreement is filed
govern further proceedings in the con- within 20 days after its execution.
tested case. (5) The arbitration is completed with-
(c) Rehearing—(1) Time for request. A in the time the Board sets.
request for rehearing of a decision on a (c) The parties are solely responsible
motion must be filed within fourteen for the selection of the arbitrator and
days of the decision. the conduct of proceedings before the
(2) No tolling. The filing of a request arbitrator.
for rehearing does not toll times for (d) Issues not disposed of by the arbi-
taking action. tration will be resolved in accordance
(3) Burden on rehearing. The burden of with the procedures established in this
showing a decision should be modified subpart.
lies with the party attacking the deci- (e) The Board will not consider the
sion. The request must specifically arbitration award unless it:

identify: (1) Is binding on the parties,
476
(2) Is in writing, (d) Rehearing. A party dissatisfied

(3) States in a clear and definite man- with the judgment may file a request
ner each issue arbitrated and the dis- for rehearing within 30 days of the
position of each issue, and entry of the judgment. The request
(4) Is filed within 20 days of the date must specifically identify all matters
of the award. the party believes to have been mis-
(f) Once the award is filed, the parties apprehended or overlooked, and the
to the award may not take actions in- place where the matter was previously
consistent with the award. If the award addressed in a motion, opposition, or
is dispositive of the contested subject reply.
matter for a party, the Board may
enter judgment as to that party. FR 58260, Sept. 30, 2004]
§ 41.127 Judgment. § 41.128 Sanctions.
(a) Effect within Office—(1) Estoppel. A
(a) The Board may impose a sanction
judgment disposes of all issues that
against a party for misconduct, includ-
were, or by motion could have properly
ing:
been, raised and decided. A losing party
(1) Failure to comply with an appli-
who could have properly moved for re-
cable rule or order in the proceeding;
lief on an issue, but did not so move,
(2) Advancing a misleading or frivo-
may not take action in the Office after
lous request for relief or argument; or
the judgment that is inconsistent with
(3) Engaging in dilatory tactics.
that party’s failure to move, except
that a losing party shall not be es- (b) Sanctions include entry of:
topped with respect to any contested (1) An order holding certain facts to
subject matter for which that party have been established in the pro-
was awarded a favorable judgment. ceeding;
(2) Final disposal of claim. Adverse (2) An order expunging, or precluding
judgment against a claim is a final ac- a party from filing, a paper;
tion of the Office requiring no further (3) An order precluding a party from
action by the Office to dispose of the presenting or contesting a particular
claim permanently. issue;
(b) Request for adverse judgment. A (4) An order precluding a party from
party may at any time in the pro- requesting, obtaining, or opposing dis-
ceeding request judgment against covery;
itself. Actions construed to be a re- (5) An order excluding evidence;
quest for adverse judgment include: (6) An order awarding compensatory
(1) Abandonment of an involved ap- expenses, including attorney fees;
plication such that the party no longer (7) An order requiring terminal dis-
has an application or patent involved claimer of patent term; or
in the proceeding, (8) Judgment in the contested case.
(2) Cancellation or disclaiming of a
claim such that the party no longer § 41.150 Discovery.
has a claim involved in the proceeding, (a) Limited discovery. A party is not
(3) Concession of priority or entitled to discovery except as author-
unpatentability of the contested sub- ized in this subpart. The parties may
ject matter, and agree to discovery among themselves
(4) Abandonment of the contest. at any time.
(c) Recommendation. The judgment (b) Automatic discovery. (1) Within 21
may include a recommendation for fur- days of a request by an opposing party,
ther action by the examiner or by the a party must:
Director. If the Board recommends re- (i) Serve a legible copy of every re-
jection of a claim of an involved appli- quested patent, patent application, lit-
cation, the examiner must enter and erature reference, and test standard
maintain the recommended rejection mentioned in the specification of the
unless an amendment or showing of party’s involved patent or application,
facts not previously of record is filed or application upon which the party
which, in the opinion of the examiner, will rely for benefit, and, if the re-
overcomes the recommended rejection. quested material is in a language other
477
§ 41.151 37 CFR Ch. I (7–1–16 Edition)
than English, a translation, if avail- (ii) In Federal Rule of Evidence

able, and 804(a)(5), the time for taking testi-
(ii) File with the Board a notice mony.
(without copies of the requested mate- Judge means the Board.
rials) of service of the requested mate- Judicial notice means official notice.
rials. Trial or hearing means, in Federal
(2) Unless previously served, or the Rule of Evidence 807, the time for tak-
Board orders otherwise, any exhibit ing testimony.
cited in a motion or in testimony must (d) The Board, in determining foreign
be served with the citing motion or tes- law, may consider any relevant mate-
timony. rial or source, including testimony,
(c) Additional discovery. (1) A party whether or not submitted by a party or
may request additional discovery. The admissible under the Federal Rules of
requesting party must show that such Evidence.
additional discovery is in the interests
of justice. The Board may specify con- § 41.153 Records of the Office.
ditions for such additional discovery. Certification is not necessary as a
(2) When appropriate, a party may condition to admissibility when the
obtain production of documents and evidence to be submitted is a record of
things during cross examination of an the Office to which all parties have ac-
opponent’s witness or during testimony cess.
authorized under § 41.156.
§ 41.154 Form of evidence.
§ 41.151 Admissibility.
(a) Evidence consists of affidavits,
Evidence that is not taken, sought, transcripts of depositions, documents,
or filed in accordance with this subpart and things. All evidence must be sub-
shall not be admissible. mitted in the form of an exhibit.
(b) Translation required. When a party
§ 41.152 Applicability of the Federal relies on a document or is required to
Rules of Evidence. produce a document in a language
(a) Generally. Except as otherwise other than English, a translation of the
provided in this subpart, the Federal document into English and an affidavit
Rules of Evidence shall apply to con- attesting to the accuracy of the trans-
tested cases. lation must be filed with the docu-
(b) Exclusions. Those portions of the ment.
Federal Rules of Evidence relating to (c) An exhibit must conform with the
criminal proceedings, juries, and other requirements for papers in § 41.106 of
matters not relevant to proceedings this subpart and the requirements of
under this subpart shall not apply. this paragraph.
(c) Modifications in terminology. Un- (1) Each exhibit must have an exhibit
less otherwise clear from context, the label with a unique number in a range
following terms of the Federal Rules of assigned by the Board, the names of
Evidence shall be construed as indi- the parties, and the proceeding number
cated: in the following format:
Appellate court means United States JONES EXHIBIT 2001
Court of Appeals for the Federal Cir-
cuit or a United States district court Jones v. Smith
when judicial review is under 35 U.S.C. Contested Case 104,999
146. (2) When the exhibit is a paper:
Civil action, civil proceeding, action, (i) Each page must be uniquely num-
and trial mean contested case. bered in sequence, and
Courts of the United States, U.S. Mag- (ii) The exhibit label must be affixed
istrate, court, trial court, and trier of fact to the lower right corner of the first
mean Board. page of the exhibit without obscuring
Hearing means: information on the first page or, if ob-
(i) In Federal Rule of Evidence 703, scuring is unavoidable, affixed to a du-

the time when the expert testifies. plicate first page.
478
(d) Exhibit list. Each party must (2) In the case of a document or
maintain an exhibit list with the ex- thing, the general nature of the docu-
hibit number and a brief description of ment or thing.
each exhibit. If the exhibit is not filed, (b) Outside the United States. For tes-
the exhibit list should note that fact. timony or production sought outside
The Board may require the filing of a the United States, the motion must
current exhibit list prior to acting on a also:
motion. (1) In the case of testimony. (i) Identify
the foreign country and explain why
[69 FR 50003, Aug. 12, 2004, as amended at 69 the party believes the witness can be
FR 58260, Sept. 30, 2004]
compelled to testify in the foreign
§ 41.155 Objection; motion to exclude; country, including a description of the
motion in limine. procedures that will be used to compel
the testimony in the foreign country
(a) Deposition. Objections to deposi- and an estimate of the time it is ex-
tion evidence must be made during the pected to take to obtain the testimony;
deposition. Evidence to cure the objec- and
tion must be provided during the depo- (ii) Demonstrate that the party has
sition unless the parties to the deposi- made reasonable efforts to secure the
tion stipulate otherwise on the deposi- agreement of the witness to testify in
tion record. the United States but has been unsuc-
(b) Other than deposition. For evi- cessful in obtaining the agreement,
dence other than deposition evidence: even though the party has offered to
(1) Objection. Any objection must be pay the expenses of the witness to trav-
served within five business days of el to and testify in the United States.
service of evidence, other than deposi- (2) In the case of production of a docu-
tion evidence, to which the objection is ment or thing. (i) Identify the foreign
directed. country and explain why the party be-
(2) Supplemental evidence. The party lieves production of the document or
relying on evidence for which an objec- thing can be compelled in the foreign
tion is timely served may respond to country, including a description of the
the objection by serving supplemental procedures that will be used to compel
evidence within ten business days of production of the document or thing in
service of the objection. the foreign country and an estimate of
(c) Motion to exclude. A miscellaneous the time it is expected to take to ob-
motion to exclude evidence must be tain production of the document or
filed to preserve any objection. The thing; and
motion must identify the objections in (ii) Demonstrate that the party has
the record in order and must explain made reasonable efforts to obtain the
the objections. agreement of the individual or entity
(d) Motion in limine. A party may file having possession, custody, or control
a miscellaneous motion in limine for a of the document to produce the docu-
ruling on the admissibility of evidence. ment or thing in the United States but
has been unsuccessful in obtaining that
[69 FR 50003, Aug. 12, 2004, as amended at 69 agreement, even though the party has
FR 58260, Sept. 30, 2004] offered to pay the expenses of pro-
ducing the document or thing in the
§ 41.156 Compelling testimony and United States.
production.
(a) Authorization required. A party § 41.157 Taking testimony.
seeking to compel testimony or pro- (a) Form. Direct testimony must be
duction of documents or things must submitted in the form of an affidavit
file a miscellaneous motion for author- except when the testimony is com-
ization. The miscellaneous motion pelled under 35 U.S.C. 24, in which case
must describe the general relevance of it may be in the form of a deposition
the testimony, document, or thing and transcript.
must: (b) Time and location. (1) Uncompelled
(1) In the case of testimony, identify direct testimony may be taken at any
the witness by name or title, and time; otherwise, testimony may only
479
§ 41.157 37 CFR Ch. I (7–1–16 Edition)
be taken during such time period as miscellaneous motion to quash is

the Board may authorize. promptly filed.
(2) Other testimony. (i) Except as the (d) Deposition in a foreign language. If
Board otherwise orders, authorized tes- an interpreter will be used during the
timony may be taken at any reason- deposition, the party calling the wit-
able time and location within the ness must initiate a conference with
United States before any disinterested the Board at least five business days
official authorized to administer oaths before the deposition.
at that location. (e) Manner of taking testimony. (1)
(ii) Testimony outside the United Each witness before giving a deposition
States may only be taken as the Board shall be duly sworn according to law by
specifically directs. the officer before whom the deposition
(c) Notice of deposition. (1) Prior to the is to be taken. The officer must be au-
taking of testimony, all parties to the thorized to take testimony under 35
proceeding must agree on the time and U.S.C. 23.
place for taking testimony. If the par- (2) The testimony shall be taken in
ties cannot agree, the party seeking
answer to interrogatories with any
the testimony must initiate a con-
questions and answers recorded in their
ference with the Board to set a time
regular order by the officer, or by some
and place.
other disinterested person in the pres-
(2) Cross-examination should ordi-
ence of the officer, unless the presence
narily take place after any supple-
of the officer is waived on the record by
mental evidence relating to the direct
agreement of all parties.
testimony has been filed and more than
a week before the filing date for any (3) Any exhibits relied upon must be
paper in which the cross-examination numbered according to the numbering
testimony is expected to be used. A scheme assigned for the contested case
party requesting cross-examination and must, if not previously served, be
testimony of more than one witness served at the deposition.
may choose the order in which the wit- (4) All objections made at the time of
nesses are to be cross-examined. the deposition to the qualifications of
(3) In the case of direct testimony, at the officer taking the deposition, the
least three business days prior to the manner of taking it, the evidence pre-
conference in paragraph (c)(1) of this sented, the conduct of any party, and
section, the party seeking the direct any other objection to the proceeding
testimony must serve: shall be noted on the record by the offi-
(i) A list and copy of each document cer. Evidence objected to shall be
under the party’s control and on which taken subject to a ruling on the objec-
the party intends to rely, and tion.
(ii) A list of, and proffer of reasonable (5) When the testimony has been
access to, any thing other than a docu- transcribed, the witness shall read and
ment under the party’s control and on sign (in the form of an affidavit) a
which the party intends to rely. transcript of the deposition unless:
(4) Notice of the deposition must be (i) The parties otherwise agree in
filed at least two business days before writing, (ii) The parties waive reading
a deposition. The notice limits the and signature by the witness on the
scope of the testimony and must list: record at the deposition, or
(i) The time and place of the deposi- (iii) The witness refuses to read or
tion, sign the transcript of the deposition.
(ii) The name and address of the wit- (6) The officer shall prepare a cer-
ness, tified transcript by attaching to the
(iii) A list of the exhibits to be relied transcript of the deposition a certifi-
upon during the deposition, and cate in the form of an affidavit signed
(iv) A general description of the and sealed by the officer. Unless the
scope and nature of the testimony to parties waive any of the following re-
be elicited. quirements, in which case the certifi-
(5) Motion to quash. Objection to a de- cate shall so state, the certificate must
fect in the notice is waived unless a state:
480
(i) The witness was duly sworn by the (5) Any other information necessary
officer before commencement of testi- for the Board to evaluate the test and
mony by the witness; data.
(ii) The transcript is a true record of
the testimony given by the witness; Subpart E—Patent Interferences
(iii) The name of the person who re-
corded the testimony and, if the officer § 41.200 Procedure; pendency.
did not record it, whether the testi- (a) A patent interference is a con-
mony was recorded in the presence of tested case subject to the procedures
the officer; set forth in subpart D of this part.
(iv) The presence or absence of any
(b) Any reference to 35 U.S.C. 102 or
opponent;
135 in this subpart refers to the statute
(v) The place where the deposition
in effect on March 15, 2013, unless oth-
was taken and the day and hour when
erwise expressly indicated. Any ref-
the deposition began and ended;
erence to 35 U.S.C. 141 or 146 in this
(vi) The officer has no disqualifying
subpart refers to the statute applicable
interest, personal or financial, in a
to the involved application or patent.
party; and
(c) Patent interferences shall be ad-
(vii) If a witness refuses to read or
ministered such that pendency before
sign the transcript, the circumstances
the Board is normally no more than
under which the witness refused.
two years.
(7) The officer must promptly provide
a copy of the transcript to all parties. [69 FR 50003, Aug. 12, 2004, as amended at 75
The proponent of the testimony must FR 19559, Apr. 15, 2010; 80 FR 17971, Apr. 2,
file the original as an exhibit. 2015]
(8) Any objection to the content,
§ 41.201 Definitions.
form, or manner of taking the deposi-
tion, including the qualifications of the In addition to the definitions in
officer, is waived unless made on the §§ 41.2 and 41.100, the following defini-
record during the deposition and pre- tions apply to proceedings under this
served in a timely filed miscellaneous subpart:
motion to exclude. Accord benefit means Board recogni-
(f) Costs. Except as the Board may tion that a patent application provides
order or the parties may agree in writ- a proper constructive reduction to
ing, the proponent of the testimony practice under 35 U.S.C. 102(g)(1).
shall bear all costs associated with the Constructive reduction to practice
testimony, including the reasonable means a described and enabled antici-
costs associated with making the wit- pation under 35 U.S.C. 102(g)(1), in a
ness available for the cross-examina- patent application of the subject mat-
tion. ter of a count. Earliest constructive re-
duction to practice means the first
§ 41.158 Expert testimony; tests and constructive reduction to practice that
data. has been continuously disclosed
(a) Expert testimony that does not through a chain of patent applications
disclose the underlying facts or data on including in the involved application
which the opinion is based is entitled or patent. For the chain to be contin-
to little or no weight. Testimony on uous, each subsequent application
United States patent law will not be must comply with the requirements of
admitted. 35 U.S.C. 119–121, 365, or 386.
(b) If a party relies on a technical Count means the Board’s description
test or data from such a test, the party of the interfering subject matter that
must provide an affidavit explaining: sets the scope of admissible proofs on
(1) Why the test or data is being used, priority. Where there is more than one
(2) How the test was performed and count, each count must describe a
the data was generated, patentably distinct invention.
(3) How the data is used to determine Involved claim means, for the pur-
a value, poses of 35 U.S.C. 135(a), a claim that
(4) How the test is regarded in the has been designated as corresponding
relevant art, and to the count.
481
§ 41.202 37 CFR Ch. I (7–1–16 Edition)
Senior party means the party entitled (b) Patentee. A patentee cannot sug-
to the presumption under § 41.207(a)(1) gest an interference under this section
that it is the prior inventor. Any other but may, to the extent permitted under
party is a junior party. § 1.291 of this title, alert the examiner
Threshold issue means an issue that, of an application claiming interfering
if resolved in favor of the movant, subject matter to the possibility of an
would deprive the opponent of standing interference.
in the interference. Threshold issues (c) Examiner. An examiner may re-
may include: quire an applicant to add a claim to
(1) No interference-in-fact, and provoke an interference. Failure to sat-
(2) In the case of an involved applica- isfy the requirement within a period
tion claim first made after the publica- (not less than one month) the examiner
tion of the movant’s application or sets will operate as a concession of pri-
issuance of the movant’s patent: ority for the subject matter of the
(i) Repose under 35 U.S.C. 135(b) in claim. If the interference would be
view of the movant’s patent or pub- with a patent, the applicant must also
lished application, or comply with paragraphs (a)(2) through
(ii) Unpatentability for lack of writ- (a)(6) of this section. The claim the ex-
ten description under 35 U.S.C. 112 of aminer proposes to have added must,
an involved application claim where apart from the question of priority
the applicant suggested, or could have under 35 U.S.C. 102(g):
suggested, an interference under
(1) Be patentable to the applicant,
§ 41.202(a).
and
[69 FR 50003, Aug. 12, 2004, as amended at 77 (2) Be drawn to patentable subject
FR 46631, Aug. 6, 2012; 80 FR 17971, Apr. 2, matter claimed by another applicant or
2015]
patentee.
§ 41.202 Suggesting an interference. (d) Requirement to show priority under
35 U.S.C. 102(g). (1) When an applicant
(a) Applicant. An applicant, including
has an earliest constructive reduction
a reissue applicant, may suggest an in-
to practice that is later than the ap-
terference with another application or
parent earliest constructive reduction
a patent. The suggestion must:
to practice for a patent or published
(1) Provide sufficient information to
application claiming interfering sub-
identify the application or patent with
which the applicant seeks an inter- ject matter, the applicant must show
ference, why it would prevail on priority.
(2) Identify all claims the applicant (2) If an applicant fails to show pri-
believes interfere, propose one or more ority under paragraph (d)(1) of this sec-
counts, and show how the claims cor- tion, an administrative patent judge
respond to one or more counts, may nevertheless declare an inter-
(3) For each count, provide a claim ference to place the applicant under an
chart comparing at least one claim of order to show cause why judgment
each party corresponding to the count should not be entered against the ap-
and show why the claims interfere plicant on priority. New evidence in
within the meaning of § 41.203(a), support of priority will not be admitted
(4) Explain in detail why the appli- except on a showing of good cause. The
cant will prevail on priority, Board may authorize the filing of mo-
(5) If a claim has been added or tions to redefine the interfering subject
amended to provoke an interference, matter or to change the benefit ac-
provide a claim chart showing the writ- corded to the parties.
ten description for each claim in the (e) Sufficiency of showing. (1) A show-
applicant’s specification, and ing of priority under this section is not
(6) For each constructive reduction sufficient unless it would, if
to practice for which the applicant unrebutted, support a determination of
wishes to be accorded benefit, provide a priority in favor of the party making
chart showing where the disclosure the showing.
provides a constructive reduction to (2) When testimony or production
practice within the scope of the inter- necessary to show priority is not avail-
fering subject matter. able without authorization under
482
§ 41.150(c) or § 41.156(a), the showing (iii) State the earliest corroborated

shall include: date on which the party’s diligence
(i) Any necessary interrogatory, re- began, and
quest for admission, request for pro- (iv) Provide a copy of the earliest
duction, or deposition request, and document upon which the party will
(ii) A detailed proffer of what the re- rely to show conception.
sponse to the interrogatory or request (3) If a junior party fails to file a pri-
would be expected to be and an expla- ority statement overcoming a senior
nation of the relevance of the response party’s accorded benefit, judgment
to the question of priority. shall be entered against the junior
[69 FR 50003, Aug. 12, 2004, as amended at 77 party absent a showing of good cause.
FR 42174, July 17, 2012] (b) Other substantive motions. The
Board may require a party to list the
§ 41.203 Declaration. motions it intends to file, including
(a) Interfering subject matter. An inter- sufficient detail to place the Board and
ference exists if the subject matter of a the opponent on notice of the precise
claim of one party would, if prior art, relief sought.
have anticipated or rendered obvious (c) Filing and service. The Board will
the subject matter of a claim of the op- set the times for filing and serving
posing party and vice versa. statements required under this section.
(b) Notice of declaration. An adminis-
§ 41.205 Settlement agreements.
trative patent judge declares the pat-
ent interference on behalf of the Direc- (a) Constructive notice; time for filing.
tor. A notice declaring an interference Pursuant to 35 U.S.C. 135(c), an agree-
identifies: ment or understanding, including col-
(1) The interfering subject matter; lateral agreements referred to therein,
(2) The involved applications, pat- made in connection with or in con-
ents, and claims; templation of the termination of an in-
(3) The accorded benefit for each terference must be filed prior to the
count; and termination of the interference be-
(4) The claims corresponding to each tween the parties to the agreement.
count. After a final decision is entered by the
(c) Redeclaration. An administrative Board, an interference is considered
patent judge may redeclare a patent in- terminated when no appeal (35 U.S.C.
terference on behalf of the Director to 141) or other review (35 U.S.C. 146) has
change the declaration made under been or can be taken or had. If an ap-
paragraph (b) of this section. peal to the U.S. Court of Appeals for
(d) A party may suggest the addition the Federal Circuit (under 35 U.S.C.
of a patent or application to the inter- 141) or a civil action (under 35 U.S.C.
ference or the declaration of an addi- 146) has been filed the interference is
tional interference. The suggestion considered terminated when the appeal
should make the showings required or civil action is terminated. A civil
under § 41.202(a) of this part. action is terminated when the time to
appeal the judgment expires. An appeal
§ 41.204 Notice of basis for relief. to the U.S. Court of Appeals for the
(a) Priority statement. (1) A party may Federal Circuit, whether from a deci-
not submit evidence of its priority in sion of the Board or a judgment in a
addition to its accorded benefit unless civil action, is terminated when the
it files a statement setting forth all mandate is issued by the Court.
bases on which the party intends to es- (b) Untimely filing. The Chief Admin-
tablish its entitlement to judgment on istrative Patent Judge may permit the
priority. filing of an agreement under paragraph
(2) The priority statement must: (a) of this section up to six months
(i) State the date and location of the after termination upon petition and a
party’s earliest corroborated concep- showing of good cause for the failure to
tion, file prior to termination.
(ii) State the date and location of the (c) Request to keep separate. Any party
party’s earliest corroborated actual re- to an agreement under paragraph (a) of

duction to practice, this section may request that the
483
§ 41.206 37 CFR Ch. I (7–1–16 Edition)
agreement be kept separate from the anticipated or rendered obvious the

interference file. The request must be subject matter of the claim.
filed with or promptly after the agree- (c) Cross-applicability of prior art.
ment is filed. When a motion for judgment of
(d) Access to agreement. Any person, unpatentability against an opponent’s
other than a representative of a Gov- claim on the basis of prior art is grant-
ernment agency, may have access to an ed, each of the movant’s claims cor-
agreement kept separate under para- responding to the same count as the
graph (c) of this section only upon peti- opponent’s claim will be presumed to
tion and on a showing of good cause. be unpatentable in view of the same
The agreement will be available to prior art unless the movant in its mo-
Government agencies on written re- tion rebuts this presumption.
quest.
§ 41.208 Content of substantive and re-
§ 41.206 Common interests in the in- sponsive motions.
vention. The general requirements for mo-
An administrative patent judge may tions in contested cases are stated at
decline to declare, or if already de- § 41.121(c).
clared the Board may issue judgment (a) In an interference, substantive
in, an interference between an applica- motions must:
tion and another application or patent (1) Raise a threshold issue,
that are commonly owned. (2) Seek to change the scope of the
definition of the interfering subject
§ 41.207 Presumptions. matter or the correspondence of claims
(a) Priority—(1) Order of invention. to the count,
Parties are presumed to have invented (3) Seek to change the benefit ac-
interfering subject matter in the order corded for the count, or
of the dates of their accorded benefit (4) Seek judgment on derivation or
for each count. If two parties are ac- on priority.
corded the benefit of the same earliest (b) To be sufficient, a motion must
date of constructive reduction to prac- provide a showing, supported with ap-
tice, then neither party is entitled to a propriate evidence, such that, if
presumption of priority with respect to unrebutted, it would justify the relief
the other such party. sought. The burden of proof is on the
(2) Evidentiary standard. Priority may movant.
be proved by a preponderance of the (c) Showing patentability. (1) A party
evidence except a party must prove pri- moving to add or amend a claim must
ority by clear and convincing evidence show the claim is patentable.
if the date of its earliest constructive (2) A party moving to add or amend a
reduction to practice is after the issue count must show the count is patent-
date of an involved patent or the publi- able over prior art.
cation date under 35 U.S.C. 122(b) of an
involved application or patent. PART 42—TRIAL PRACTICE BEFORE
(b) Claim correspondence. (1) For the THE PATENT TRIAL AND APPEAL
purposes of determining priority and BOARD
derivation, all claims of a party cor-
responding to the count are presumed Subpart A—Trial Practice and Procedure
to stand or fall together. To challenge
this presumption, a party must file a GENERAL
timely substantive motion to have a Sec.
corresponding claim designated as not 42.1 Policy.
corresponding to the count. No pre- 42.2 Definitions.
sumption based on claim correspond- 42.3 Jurisdiction.
ence regarding the grouping of claims 42.4 Notice of trial.
42.5 Conduct of the proceeding.
exists for other grounds of 42.6 Filing of documents, including exhibits;
unpatentability. service.
(2) A claim corresponds to a count if
42.7 Management of the record.

the subject matter of the count, treat- 42.8 Mandatory notices.
ed as prior art to the claim, would have 42.9 Action by patent owner.
484
42.10 Counsel. Subpart C—Post-Grant Review
42.11 Duty of candor; signing papers; rep-
resentations to the Board; sanctions. GENERAL.
42.12 Sanctions.
42.13 Citation of authority. 42.200 Procedure; pendency.
42.14 Public availability. 42.201 Who may petition for a post-grant re-
view.
FEES 42.202 Time for filing.
42.15 Fees. 42.203 Post-grant review fee.
42.204 Content of petition.
PETITION AND MOTION PRACTICE 42.205 Service of petition.
42.20 Generally. 42.206 Filing date.
42.21 Notice of basis for relief. 42.207 Preliminary response to petition.
42.22 Content of petitions and motions.
42.23 Oppositions and replies. INSTITUTING POST-GRANT REVIEW
42.24 Type-volume or page-limits for peti- 42.208 Institution of post-grant review.
tions, motions, oppositions, and replies.
42.25 Default filing times. AFTER INSTITUTION OF POST-GRANT REVIEW
TESTIMONY AND PRODUCTION 42.220 Patent owner response.
42.51 Discovery. 42.221 Amendment of the patent.
42.52 Compelling testimony and production. 42.222 Multiple proceedings and Joinder.
42.53 Taking testimony. 42.223 Filing of supplemental information.
42.54 Protective order. 42.224 Discovery.
42.55 Confidential information in a petition.
42.56 Expungement of confidential informa- Subpart D—Transitional Program for
tion. Covered Business Method Patents
42.61 Admissibility.
42.62 Applicability of the Federal rules of 42.300 Procedure; pendency.
evidence. 42.301 Definitions.
42.63 Form of evidence. 42.302 Who may petition for a covered busi-
42.64 Objection; motion to exclude.
ness method patent review.
42.65 Expert testimony; tests and data.
42.303 Time for filing.
ORAL ARGUMENT, DECISION, AND SETTLEMENT 42.304 Content of petition.
42.70 Oral argument.
42.71 Decision on petitions or motions. Subpart E—Derivation
42.72 Termination of trial.
42.400 Procedure; pendency
42.73 Judgment.
42.74 Settlement. 42.401 Definitions.
42.402 Who may file a petition for a deriva-
CERTIFICATE tion proceeding.
42.80 Certificate. 42.403 Time for filing.
42.404 Derivation fee.
Subpart B—Inter Partes Review 42.405 Content of petition.
42.406 Service of petition.
GENERAL 42.407 Filing date.
42.100 Procedure; pendency.
42.101 Who may petition for inter partes re- INSTITUTING DERIVATION PROCEEDING
view. 42.408 Institution of derivation proceeding.
42.102 Time for filing.
42.103 Inter partes review fee. AFTER INSTITUTION OF DERIVATION
42.104 Content of petition. PROCEEDING
42.105 Service of petition.
42.106 Filing date. 42.409 Settlement agreements.
42.107 Preliminary response to petition. 42.410 Arbitration.
42.411 Common interests in the invention.
INSTITUTING Inter Partes REVIEW 42.412 Public availability of Board records.
42.108 Institution of inter partes review.
AUTHORITY: 35 U.S.C. 2(b)(2), 6, 21, 23, 41,
AFTER INSTITUTION OF Inter Partes REVIEW 135, 311, 312, 316, 321–326; Pub. L. 112–29, 125
Stat. 284; and Pub. L. 112–274, 126 Stat. 2456.
42.120 Patent owner response.
42.121 Amendment of the patent. SOURCE: 77 FR 48669, Aug. 14, 2012, unless
42.122 Multiple proceedings and Joinder. otherwise noted.
42.123 Filing of supplemental information.
485
§ 42.1 37 CFR Ch. I (7–1–16 Edition)
Subpart A—Trial Practice and not indicate that further action is re-
Procedure quired.
Hearing means consideration of the
GENERAL trial.
Involved means an application, pat-
§ 42.1 Policy. ent, or claim that is the subject of the
(a) Scope. Part 42 governs proceedings proceeding.
before the Patent Trial and Appeal Judgment means a final written deci-
Board. Sections 1.4, 1.7, 1.14, 1.16, 1.22, sion by the Board, or a termination of
1.23, 1.25, 1.26, 1.32, 1.34, and 1.36 of this a proceeding.
chapter also apply to proceedings be- Motion means a request for relief
fore the Board, as do other sections of other than by petition.
part 1 of this chapter that are incor- Office means the United States Pat-
porated by reference into this part. ent and Trademark Office.
(b) Construction. This part shall be Panel means at least three members
construed to secure the just, speedy, of the Board.
and inexpensive resolution of every Party means at least the petitioner
proceeding. and the patent owner and, in a deriva-
(c) Decorum. Every party must act tion proceeding, any applicant or as-
with courtesy and decorum in all pro- signee of the involved application.
ceedings before the Board, including in Petition is a request that a trial be in-
interactions with other parties. stituted.
(d) Evidentiary standard. The default Petitioner means the party filing a pe-
evidentiary standard is a preponder- tition requesting that a trial be insti-
ance of the evidence. tuted.
Preliminary Proceeding begins with
§ 42.2 Definitions. the filing of a petition for instituting a
The following definitions apply to trial and ends with a written decision
this part: as to whether a trial will be instituted.
Affidavit means affidavit or declara- Proceeding means a trial or prelimi-
tion under § 1.68 of this chapter. A tran- nary proceeding.
script of an ex parte deposition or a dec- Rehearing means reconsideration.
laration under 28 U.S.C. 1746 may be Trial means a contested case insti-
used as an affidavit. tuted by the Board based upon a peti-
Board means the Patent Trial and tion. A trial begins with a written deci-
Appeal Board. Board means a panel of sion notifying the petitioner and pat-
the Board, or a member or employee ent owner of the institution of the
acting with the authority of the Board, trial. The term trial specifically in-
including: cludes a derivation proceeding under 35
(1) For petition decisions and inter- U.S.C. 135; an inter partes review under
locutory decisions, a Board member or Chapter 31 of title 35, United States
employee acting with the authority of Code; a post-grant review under Chap-
the Board. ter 32 of title 35, United States Code;
(2) For final written decisions under and a transitional business-method re-
35 U.S.C. 135(d), 318(a), and 328(a), a view under section 18 of the Leahy-
panel of the Board. Smith America Invents Act. Patent
Business day means a day other than interferences are administered under
a Saturday, Sunday, or Federal holiday part 41 and not under part 42 of this
within the District of Columbia. title, and therefore are not trials.
Confidential information means trade
secret or other confidential research, § 42.3 Jurisdiction.
development, or commercial informa- (a) The Board may exercise exclusive
tion. jurisdiction within the Office over
Final means final for the purpose of every involved application and patent
judicial review to the extent available. during the proceeding, as the Board
A decision is final only if it disposes of may order.
all necessary issues with regard to the (b) A petition to institute a trial
party seeking judicial review, and does must be filed with the Board consistent
486
with any time period required by stat- (i) Markings must be in black or
ute. must otherwise provide an equivalent
dark, high-contrast image;
§ 42.4 Notice of trial. (ii) 14-point, Times New Roman pro-
(a) Institution of trial. The Board in- portional font, with normal spacing,
stitutes the trial on behalf of the Di- must be used;
rector. (iii) Double spacing must be used ex-
(b) Notice of a trial will be sent to cept in claim charts, headings, tables
every party to the proceeding. The of contents, tables of authorities, indi-
entry of the notice institutes the trial. ces, signature blocks, and certificates
(c) The Board may authorize addi- of service. Block quotations may be 1.5
tional modes of notice, including: spaced, but must be indented from both
(1) Sending notice to another address the left and the right margins; and
associated with the party, or (iv) Margins must be at least 2.5 cen-
(2) Publishing the notice in the Offi- timeters (1 inch) on all sides.
cial Gazette of the United States Pat- (3) Incorporation by reference; combined
ent and Trademark Office or the FED- documents. Arguments must not be in-
ERAL REGISTER. corporated by reference from one docu-
§ 42.5 Conduct of the proceeding. ment into another document. Com-
bined motions, oppositions, replies, or
(a) The Board may determine a prop- other combined documents are not per-
er course of conduct in a proceeding for mitted.
any situation not specifically covered (4) Signature; identification. Docu-
by this part and may enter non-final ments must be signed in accordance
orders to administer the proceeding. with §§ 1.33 and 11.18(a) of this title, and
(b) The Board may waive or suspend should be identified by the trial num-
a requirement of parts 1, 41, and 42 and ber (where known).
may place conditions on the waiver or
(b) Modes of filing. (1) Electronic filing.
suspension.
Unless otherwise authorized, submis-
(c) Times. (1) Setting times. The Board
sions are to be made to the Board elec-
may set times by order. Times set by
tronically via the Internet according to
rule are default and may be modified
the parameters established by the
by order. Any modification of times
Board and published on the Web site of
will take any applicable statutory
the Office.
pendency goal into account.
(2)(i) Filing by means other than elec-
(2) Extension of time. A request for an
tronic filing. A document filed by means
extension of time must be supported by
other than electronic filing must:
a showing of good cause.
(3) Late action. A late action will be (A) Be accompanied by a motion re-
excused on a showing of good cause or questing acceptance of the submission;
upon a Board decision that consider- and
ation on the merits would be in the in- (B) Identify a date of transmission
terests of justice. where a party seeks a filing date other
(d) Ex parte communications. Commu- than the date of receipt at the Board.
nication regarding a specific pro- (ii) Mailed correspondence shall be
ceeding with a Board member defined sent to: Mail Stop PATENT BOARD,
in 35 U.S.C. 6(a) is not permitted unless Patent Trial and Appeal Board, United
both parties have an opportunity to be States Patent and Trademark Office,
involved in the communication. PO Box 1450, Alexandria, Virginia
22313–1450.
§ 42.6 Filing of documents, including (c) Exhibits. Each exhibit must be
exhibits; service. filed with the first document in which
(a) General format requirements. (1) it is cited except as the Board may oth-
Page size must be 81⁄2 inch × 11 inch ex- erwise order.
cept in the case of exhibits that require (d) Previously filed paper. A document
a larger size in order to preserve de- already in the record of the proceeding
tails of the original. must not be filed again, not even as an
(2) In documents, including affida- exhibit or an appendix, without express

vits, created for the proceeding: Board authorization.
487
§ 42.7 37 CFR Ch. I (7–1–16 Edition)
(e) Service. (1) Electronic or other mode. (2) By the patent owner, or applicant
Service may be made electronically in the case of derivation, within 21
upon agreement of the parties. Other- days of service of the petition; or
wise, service may be by Priority Mail (3) By either party, within 21 days of
Express® or by means at least as fast a change of the information listed in
and reliable as Priority Mail Express®. paragraph (b) of this section stated in
(2) Simultaneous with filing. Each doc- an earlier paper.
ument filed with the Board, if not pre- (b) Each of the following notices
viously served, must be served simulta- must be filed:
neously on each opposing party. (1) Real party-in-interest. Identify each
(3) Counsel of record. If a party is rep- real party-in-interest for the party.
resented by counsel of record in the (2) Related matters. Identify any other
proceeding, service must be on counsel. judicial or administrative matter that
(4) Certificate of service. (i) Each docu- would affect, or be affected by, a deci-
ment, other than an exhibit, must in- sion in the proceeding.
clude a certificate of service at the end (3) Lead and back-up counsel. If the
of that document. Any exhibit filed party is represented by counsel, then
with the document may be included in counsel must be identified.
the certification for the document.
(4) Service information. Identify (if ap-
(ii) For an exhibit filed separately, a
plicable):
transmittal letter incorporating the
(i) An electronic mail address;
certificate of service must be filed. If
more than one exhibit is filed at one (ii) A postal mailing address;
time, a single letter should be used for (iii) A hand-delivery address, if dif-
all of the exhibits filed together. The ferent than the postal mailing address;
letter must state the name and exhibit (iv) A telephone number; and
number for every exhibit filed with the (v) A facsimile number.
letter.
(iii) The certificate of service must § 42.9 Action by patent owner.
state: (a) Entire interest. An owner of the en-
(A) The date and manner of service; tire interest in an involved application
and or patent may act to the exclusion of
(B) The name and address of every the inventor (see § 3.71 of this title).
person served. (b) Part interest. An owner of a part
[77 FR 48669, Aug. 14, 2012, as amended at 79 interest in the subject patent may
FR 63043, Oct. 22, 2014; 80 FR 28565, May 19, move to act to the exclusion of an in-
2015] ventor or a co-owner. The motion must
show the inability or refusal of an in-
§ 42.7 Management of the record. ventor or co-owner to prosecute the
(a) The Board may expunge any paper proceeding or other cause why it is in
directed to a proceeding or filed while the interests of justice to permit the
an application or patent is under the owner of a part interest to act in the
jurisdiction of the Board that is not trial. In granting the motion, the
authorized under this part or in a Board may set conditions on the ac-
Board order or that is filed contrary to tions of the parties.
a Board order.
(b) The Board may vacate or hold in § 42.10 Counsel.
abeyance any non-Board action di- (a) If a party is represented by coun-
rected to a proceeding while an appli- sel, the party must designate a lead
cation or patent is under the jurisdic- counsel and at least one back-up coun-
tion of the Board unless the action was sel who can conduct business on behalf
authorized by the Board. of the lead counsel.
(b) A power of attorney must be filed
§ 42.8 Mandatory notices. with the designation of counsel, except
(a) Each notice listed in paragraph the patent owner should not file an ad-
(b) of this section must be filed with ditional power of attorney if the des-
the Board: ignated counsel is already counsel of
(1) By the petitioner, as part of the record in the subject patent or applica-
petition; tion.
488
(c) The Board may recognize counsel propriate sanction on any attorney,
pro hac vice during a proceeding upon a registered practitioner, or party that
showing of good cause, subject to the violated the rule or is responsible for
condition that lead counsel be a reg- the violation.
istered practitioner and to any other (2) Motion for sanctions. A motion for
conditions as the Board may impose. sanctions must be made separately
For example, where the lead counsel is from any other motion and must de-
a registered practitioner, a motion to scribe the specific conduct that alleg-
appear pro hac vice by counsel who is edly violates paragraph (c) of this sec-
not a registered practitioner may be tion. The motion must be authorized
granted upon showing that counsel is by the Board under § 42.20 prior to fil-
an experienced litigating attorney and ing the motion. At least 21 days prior
has an established familiarity with the to seeking authorization to file a mo-
subject matter at issue in the pro- tion for sanctions, the moving party
ceeding. must serve the other party with the
(d) A panel of the Board may dis- proposed motion. A motion for sanc-
qualify counsel for cause after notice tions must not be filed or be presented
and opportunity for hearing. A decision to the Board if the challenged paper,
to disqualify is not final for the pur- claim, defense, contention, or denial is
poses of judicial review until certified withdrawn or appropriately corrected
by the Chief Administrative Patent within 21 days after service of such mo-
Judge. tion or within another time the Board
(e) Counsel may not withdraw from a sets. If warranted, the Board may
proceeding before the Board unless the award to the prevailing party the rea-
Board authorizes such withdrawal. sonable expenses, including attorney’s
[77 FR 48669, Aug. 14, 2012, as amended at 80 fees, incurred for the motion.
FR 28565, May 19, 2015] (3) On the Board’s initiative. On its
own, the Board may order an attorney,
§ 42.11 Duty of candor; signing papers; registered practitioner, or party to
representations to the Board; sanc- show cause why conduct specifically
tions. described in the order has not violated
(a) Duty of candor. Parties and indi- paragraph (c) of this section and why a
viduals involved in the proceeding have specific sanction authorized by the
a duty of candor and good faith to the Board should not be imposed.
Office during the course of a pro- (4) Nature of a sanction. A sanction
ceeding. imposed under this rule must be lim-
(b) Signature. Every petition, re- ited to what suffices to deter repetition
sponse, written motion, and other of the conduct or comparable conduct
paper filed in a proceeding must com- by others similarly situated and should
ply with the signature requirements be consistent with § 42.12.
set forth in § 11.18(a) of this chapter. (5) Requirements for an order. An order
The Board may expunge any unsigned imposing a sanction must describe the
submission unless the omission is sanctioned conduct and explain the
promptly corrected after being called basis for the sanction.
to the counsel’s or party’s attention.
[81 FR 18765, Apr. 1, 2016]
(c) Representations to the Board. By
presenting to the Board a petition, re- § 42.12 Sanctions.
sponse, written motion, or other
paper—whether by signing, filing, sub- (a) The Board may impose a sanction
mitting, or later advocating it—an at- against a party for misconduct, includ-
torney, registered practitioner, or un- ing:
represented party attests to compli- (1) Failure to comply with an appli-
ance with the certification require- cable rule or order in the proceeding;
ments under § 11.18(b)(2) of this chapter. (2) Advancing a misleading or frivo-
(d) Sanctions—(1) In general. If, after lous argument or request for relief;
notice and a reasonable opportunity to (3) Misrepresentation of a fact;
respond, the Board determines that (4) Engaging in dilatory tactics;
paragraph (c) of this section has been (5) Abuse of discovery;

violated, the Board may impose an ap- (6) Abuse of process; or
489
§ 42.13 37 CFR Ch. I (7–1–16 Edition)
(7) Any other improper use of the FEES

proceeding, including actions that har-
ass or cause unnecessary delay or an § 42.15 Fees.
unnecessary increase in the cost of the (a) On filing a petition for inter partes
proceeding. review of a patent, payment of the fol-
(b) Sanctions include entry of one or lowing fees are due:
more of the following: (1) Inter Partes Review request fee:
(1) An order holding facts to have $9,000.00.
been established in the proceeding; (2) Inter Partes Review Post-Institu-
(2) An order expunging or precluding tion fee: $14,000.00.
a party from filing a paper; (3) In addition to the Inter Partes Re-
(3) An order precluding a party from view request fee, for requesting review
presenting or contesting a particular of each claim in excess of 20, including
issue; unchallenged claims from which a
(4) An order precluding a party from challenged claim depends: $200.00.
requesting, obtaining, or opposing dis- (4) In addition to the Inter Partes
covery;
Post-Institution request fee, for re-
(5) An order excluding evidence; questing review of each claim in excess
(6) An order providing for compen- of 15, including unchallenged claims
satory expenses, including attorney from which a challenged claim de-
fees;
pends: $400.00.
(7) An order requiring terminal dis-
(b) On filing a petition for post-grant
claimer of patent term; or
review or covered business method pat-
(8) Judgment in the trial or dismissal
ent review of a patent, payment of the
of the petition.
following fees are due:
§ 42.13 Citation of authority. (1) Post-Grant or Covered Business
Method Patent Review request fee:
(a) For any United States Supreme $12,000.00.
Court decision, citation to the United
(2) Post-Grant or Covered Business
States Reports is preferred.
Method Patent Review Post-Institu-
(b) For any decision other than a tion fee: $18,000.00.
United States Supreme Court decision,
(3) In addition to the Post-Grant or
citation to the West Reporter System
Covered Business Method Patent Re-
is preferred.
view request fee, for requesting review
(c) Citations to authority must in-
of each claim in excess of 20, including
clude pinpoint citations whenever a
unchallenged claims from which a
specific holding or portion of an au-
thority is invoked. challenged claim depends: $250.00.
(d) Non-binding authority should be (4) In addition to the Post-Grant or
used sparingly. If the authority is not Covered Business Method Patent Re-
an authority of the Office and is not review Post-Institution request fee, for
produced in the United States Reports requesting review of each claim in ex-
or the West Reporter System, a copy of cess of 15, including unchallenged
the authority should be provided. claims from which a challenged claim
depends: $550.00.
§ 42.14 Public availability. (c) On the filing of a petition for a
The record of a proceeding, including derivation proceeding, payment of the
documents and things, shall be made following fees is due:
available to the public, except as oth- (1) Derivation petition fee: $400.00.
erwise ordered. A party intending a (d) Any request requiring payment of
document or thing to be sealed shall a fee under this part, including a writ-
file a motion to seal concurrent with ten request to make a settlement
the filing of the document or thing to agreement available: $400.00.
be sealed. The document or thing shall
be provisionally sealed on receipt of
FR 28565, May 19, 2015]

the motion and remain so pending the
outcome of the decision on the motion.
490
PETITION AND MOTION PRACTICE § 42.22 Content of petitions and mo-

tions.
§ 42.20 Generally.
(a) Each petition or motion must be
(a) Relief. Relief, other than a peti- filed as a separate paper and must in-
tion requesting the institution of a clude:
trial, must be requested in the form of (1) A statement of the precise relief
a motion. requested; and
(b) Prior authorization. A motion will (2) A full statement of the reasons for
not be entered without Board author- the relief requested, including a de-
ization. Authorization may be provided tailed explanation of the significance
in an order of general applicability or of the evidence including material
during the proceeding. facts, and the governing law, rules, and
(c) Burden of proof. The moving party precedent.
has the burden of proof to establish (b) Relief requested. Where a rule in
that it is entitled to the requested re- part 1 of this title ordinarily governs
lief. the relief sought, the petition or mo-
tion must make any showings required
(d) Briefing. The Board may order
under that rule in addition to any
briefing on any issue involved in the
showings required in this part.
trial.
(c) Statement of material facts. Each
§ 42.21 Notice of basis for relief. petition or motion may include a state-
ment of material fact. Each material
(a) Notice of request for relief. The fact preferably shall be set forth as a
Board may require a party to file a no- separately numbered sentence with
tice stating the relief it requests and specific citations to the portions of the
the basis for its entitlement to relief. A record that support the fact.
notice must include sufficient detail to (d) The Board may order additional
place the Board and each opponent on showings or explanations as a condi-
notice of the precise relief requested. A tion for authorizing a motion (see
notice is not evidence except as an ad- § 42.20(b)).
mission by a party-opponent.
(b) Filing and service. The Board may § 42.23 Oppositions and replies.
set the times and conditions for filing (a) Oppositions and replies must com-
and serving notices required under this ply with the content requirements for
section. The Board may provide for the motions and, if the paper to which the
notice filed with the Board to be main- opposition or reply is responding con-
tained in confidence for a limited time. tains a statement of material fact,
(c) Effect. If a notice under paragraph must include a listing of facts that are
(a) of this section is required: admitted, denied, or cannot be admit-
ted or denied. Any material fact not
(1) A failure to state a sufficient
specifically denied may be considered
basis for relief may result in a denial of admitted.
the relief requested; (b) All arguments for the relief re-
(2) A party will be limited to filing quested in a motion must be made in
motions consistent with the notice; the motion. A reply may only respond
and to arguments raised in the cor-
(3) Ambiguities in the notice will be responding opposition, patent owner
construed against the party. preliminary response, or patent owner
(d) Correction. A party may move to response.
correct its notice. The motion should
be filed promptly after the party be- FR 28565, May 19, 2015; 81 FR 18765, Apr. 1,
comes aware of the basis for the correc- 2016]
tion. A correction filed after the time
set for filing notices will only be en- § 42.24 Type-volume or page-limits for
tered if entry would serve the interests petitions, motions, oppositions, and
of justice. replies.
(a) Petitions and motions. (1) The fol-

lowing word counts or page limits for
491
§ 42.25 37 CFR Ch. I (7–1–16 Edition)
petitions and motions apply and in- tents, a table of authorities, a listing
clude any statement of material facts of facts which are admitted, denied, or
to be admitted or denied in support of cannot be admitted or denied, a certifi-
the petition or motion. The word count cate of service or word count, or appen-
or page limit does not include a table dix of exhibits.
of contents, a table of authorities, (1) Replies to patent owner responses to
mandatory notices under § 42.8, a cer- petitions: 5,600 words.
tificate of service or word count, or ap- (2) Replies to oppositions (excluding re-
pendix of exhibits or claim listing. plies to oppositions to motions to amend):
(i) Petition requesting inter partes re- 5 pages.
view: 14,000 words. (3) Replies to oppositions to motions to
(ii) Petition requesting post-grant re- amend: 12 pages.
view: 18,700 words. (d) Certification. Any paper whose
(iii) Petition requesting covered busi- length is specified by type-volume lim-
ness method patent review: 18,700 its must include a certification stating
words. the number of words in the paper. A
(iv) Petition requesting derivation party may rely on the word count of
proceeding: 14,000 words. the word-processing system used to
(v) Motions (excluding motions to prepare the paper.
amend): 15 pages.
(vi) Motions to Amend: 25 pages. [81 FR 18765, Apr. 1, 2016, as amended at 81
FR 24703, Apr. 27, 2016]
(2) Petitions to institute a trial must
comply with the stated word counts § 42.25 Default filing times.
but may be accompanied by a motion
to waive the word counts. The peti- (a) A motion may only be filed ac-
tioner must show in the motion how a cording to a schedule set by the Board.
waiver of the word counts is in the in- The default times for acting are:
terests of justice and must append a (1) An opposition is due one month
copy of proposed petition exceeding the after service of the motion; and
word count to the motion. If the mo- (2) A reply is due one month after
tion is not granted, the proposed peti- service of the opposition.
tion exceeding the word count may be (b) A party should seek relief prompt-
expunged or returned. Any other mo- ly after the need for relief is identified.
tion to waive word counts or page lim- Delay in seeking relief may justify a
its must be granted in advance of filing denial of relief sought.
a motion, opposition, or reply for
which the waiver is necessary. TESTIMONY AND PRODUCTION
(b) Patent owner responses and opposi-
§ 42.51 Discovery.
tions. The word counts or page limits
set forth in this paragraph (b) do not (a) Mandatory initial disclosures.
include a listing of facts which are ad- (1) With agreement. Parties may agree
mitted, denied, or cannot be admitted to mandatory discovery requiring the
or denied. initial disclosures set forth in the Of-
(1) The word counts for a patent fice Patent Trial Practice Guide.
owner preliminary response to petition (i) The parties must submit any
are the same as the word counts for the agreement reached on initial disclo-
petition. sures by no later than the filing of the
(2) The word counts for a patent patent owner preliminary response or
owner response to petition are the the expiration of the time period for
same as the word counts for the peti- filing such a response. The initial dis-
tion. closures of the parties shall be filed as
(3) The page limits for oppositions exhibits.
are the same as those for corresponding (ii) Upon the institution of a trial,
motions. parties may automatically take dis-
(c) Replies. The following word counts covery of the information identified in
or page limits for replies apply and in- the initial disclosures.
clude any statement of facts in support (2) Without agreement. Where the par-
of the reply. The word counts or page ties fail to agree to the mandatory dis-
limits do not include a table of con- covery set forth in paragraph (a)(1), a
492
party may seek such discovery by mo- copying at a reasonable time and loca-
tion. tion in the United States.
(b) Limited discovery. A party is not [77 FR 48669, Aug. 14, 2012, as amended at 80
entitled to discovery except as pro- FR 28565, May 19, 2015]
vided in paragraph (a) of this section,
or as otherwise authorized in this sub- § 42.52 Compelling testimony and pro-
part. duction.
(1) Routine discovery. Except as the (a) Authorization required. A party
Board may otherwise order: seeking to compel testimony or pro-
(i) Unless previously served or other- duction of documents or things must
wise by agreement of the parties, any file a motion for authorization. The
exhibit cited in a paper or in testimony motion must describe the general rel-
must be served with the citing paper or evance of the testimony, document, or
testimony. thing, and must:
(ii) Cross examination of affidavit (1) In the case of testimony, identify
testimony prepared for the proceeding the witness by name or title; and
is authorized within such time period (2) In the case of a document or
as the Board may set. thing, the general nature of the docu-
ment or thing.
(iii) Unless previously served, a party
(b) Outside the United States. For tes-
must serve relevant information that
timony or production sought outside
is inconsistent with a position ad-
the United States, the motion must
vanced by the party during the pro-
also:
ceeding concurrent with the filing of (1) In the case of testimony. (i) Identify
the documents or things that contains the foreign country and explain why
the inconsistency. This requirement the party believes the witness can be
does not make discoverable anything compelled to testify in the foreign
otherwise protected by legally recog- country, including a description of the
nized privileges such as attorney-client procedures that will be used to compel
or attorney work product. This re- the testimony in the foreign country
quirement extends to inventors, cor- and an estimate of the time it is ex-
porate officers, and persons involved in pected to take to obtain the testimony;
the preparation or filing of the docu- and
ments or things. (ii) Demonstrate that the party has
(2) Additional discovery. (i) The parties made reasonable efforts to secure the
may agree to additional discovery be- agreement of the witness to testify in
tween themselves. Where the parties the United States but has been unsuc-
fail to agree, a party may move for ad- cessful in obtaining the agreement,
ditional discovery. The moving party even though the party has offered to
must show that such additional dis- pay the travel expenses of the witness
covery is in the interests of justice, ex- to testify in the United States.
cept in post-grant reviews where addi- (2) In the case of production of a docu-
tional discovery is limited to evidence ment or thing. (i) Identify the foreign
directly related to factual assertions country and explain why the party be-
advanced by either party in the pro- lieves production of the document or
ceeding (see § 42.224). The Board may thing can be compelled in the foreign
specify conditions for such additional country, including a description of the
discovery. procedures that will be used to compel
(ii) When appropriate, a party may production of the document or thing in
obtain production of documents and the foreign country and an estimate of
things during cross examination of an the time it is expected to take to ob-
opponent’s witness or during author- tain production of the document or
ized compelled testimony under § 42.52. thing; and
(c) Production of documents. Except as (ii) Demonstrate that the party has
otherwise ordered by the Board, a made reasonable efforts to obtain the
party producing documents and things agreement of the individual or entity
shall either provide copies to the op- having possession, custody, or control
posing party or make the documents of the document or thing to produce

and things available for inspection and the document or thing in the United
493
§ 42.53 37 CFR Ch. I (7–1–16 Edition)
States but has been unsuccessful in ob- party seeking the testimony must ini-
taining that agreement, even though tiate a conference with the Board to
the party has offered to pay the ex- set a time and place.
penses of producing the document or (2) Cross-examination should ordi-
thing in the United States. narily take place after any supple-
mental evidence relating to the direct
§ 42.53 Taking testimony. testimony has been filed and more than
(a) Form. Uncompelled direct testi- a week before the filing date for any
mony must be submitted in the form of paper in which the cross-examination
an affidavit. All other testimony, in- testimony is expected to be used. A
cluding testimony compelled under 35 party requesting cross-examination
U.S.C. 24, must be in the form of a dep- testimony of more than one witness
osition transcript. Parties may agree may choose the order in which the wit-
to video-recorded testimony, but may nesses are to be cross-examined.
not submit such testimony without (3) In the case of direct deposition
prior authorization of the Board. In ad- testimony, at least three business days
dition, the Board may authorize or re- prior to the conference in paragraph
quire live or video-recorded testimony. (d)(1) of this section, or if there is no
(b) Time and location. (1) Uncompelled conference, at least ten days prior to
direct testimony may be taken at any the deposition, the party seeking the
time to support a petition, motion, op- direct testimony must serve:
position, or reply; otherwise, testi- (i) A list and copy of each document
mony may only be taken during a tes- under the party’s control and on which
timony period set by the Board. the party intends to rely; and
(2) Except as the Board otherwise or- (ii) A list of, and proffer of reasonable
ders, during the testimony period, dep- access to, anything other than a docu-
osition testimony may be taken at any ment under the party’s control and on
reasonable time and location within which the party intends to rely.
the United States before any disin- (4) The party seeking the deposition
terested official authorized to admin- must file a notice of the deposition at
ister oaths at that location. least ten business days before a deposi-
(3) Uncompelled deposition testi- tion.
mony outside the United States may (5) Scope and content—(i) For direct
only be taken upon agreement of the deposition testimony, the notice limits
parties or as the Board specifically di- the scope of the testimony and must
rects. list:
(c) Duration. (1) Unless stipulated by (A) The time and place of the deposi-
the parties or ordered by the Board, dition;
rect examination, cross-examination, (B) The name and address of the wit-
and redirect examination for compelled ness;
deposition testimony shall be subject (C) A list of the exhibits to be relied
to the following time limits: Seven upon during the deposition; and
hours for direct examination, four (D) A general description of the scope
hours for cross-examination, and two and nature of the testimony to be elic-
hours for redirect examination. ited.
(2) Unless stipulated by the parties or (ii) For cross-examination testimony,
ordered by the Board, cross-examina- the scope of the examination is limited
tion, redirect examination, and re- to the scope of the direct testimony.
cross examination for uncompelled di- (iii) The notice must list the time
rect testimony shall be subject to the and place of the deposition.
follow time limits: Seven hours for (iv) Where an additional party seeks
cross-examination, four hours for redi- to take direct testimony of a third
rect examination, and two hours for re- party witness at the time and place no-
cross examination. ticed in paragraph (d)(5) of this section,
(d) Notice of deposition. (1) Prior to the additional party must provide a
the taking of deposition testimony, all counter notice that lists the exhibits
parties to the proceeding must agree to be relied upon in the deposition and
on the time and place for taking testi- a general description of the scope and
mony. If the parties cannot agree, the nature of the testimony to be elicited.
494
(6) Motion to quash—Objection to a (i) The witness was duly sworn by the
defect in the notice is waived unless officer before commencement of testi-
the objecting party promptly seeks au- mony by the witness;
thorization to file a motion to quash. (ii) The transcript is a true record of
(e) Deposition in a foreign language. If the testimony given by the witness;
an interpreter will be used during the (iii) The name of the person who re-
deposition, the party calling the wit- corded the testimony, and if the officer
ness must initiate a conference with did not record it, whether the testi-
the Board at least five business days mony was recorded in the presence of
before the deposition. the officer;
(f) Manner of taking deposition testi- (iv) The presence or absence of any
mony. (1) Before giving deposition tes- opponent;
(v) The place where the deposition
timony, each witness shall be duly
was taken and the day and hour when
sworn according to law by the officer
the deposition began and ended;
before whom the deposition is to be
(vi) The officer has no disqualifying
taken. The officer must be authorized
interest, personal or financial, in a
to take testimony under 35 U.S.C. 23.
party; and
(2) The testimony shall be taken with (vii) If a witness refuses to read or
any questions and answers recorded in sign the transcript, the circumstances
their regular order by the officer, or by under which the witness refused.
some other disinterested person in the (7) Except where the parties agree
presence of the officer, unless the pres- otherwise, the proponent of the testi-
ence of the officer is waived on the mony must arrange for providing a
record by agreement of all parties. copy of the transcript to all other par-
(3) Any exhibits used during the dep- ties. The testimony must be filed as an
osition must be numbered as required exhibit.
by § 42.63(c), and must, if not previously (8) Any objection to the content,
served, be served at the deposition. Ex- form, or manner of taking the deposi-
hibits objected to shall be accepted tion, including the qualifications of the
pending a decision on the objection. officer, is waived unless made on the
(4) All objections made at the time of record during the deposition and pre-
the deposition to the qualifications of served in a timely filed motion to ex-
the officer taking the deposition, the clude.
manner of taking it, the evidence pre- (g) Costs. Except as the Board may
sented, the conduct of any party, and order or the parties may agree in writ-
any other objection to the deposition ing, the proponent of the direct testi-
shall be noted on the record by the offi- mony shall bear all costs associated
cer. with the testimony, including the rea-
(5) When the testimony has been sonable costs associated with making
transcribed, the witness shall read and the witness available for the cross-ex-
sign (in the form of an affidavit) a amination.
transcript of the deposition unless: [77 FR 48669, Aug. 14, 2012, as amended at 80
(i) The parties otherwise agree in FR 28565, May 19, 2015]
writing;
(ii) The parties waive reading and § 42.54 Protective order.
signature by the witness on the record (a) A party may file a motion to seal
at the deposition; or where the motion to seal contains a
(iii) The witness refuses to read or proposed protective order, such as the
sign the transcript of the deposition. default protective order set forth in the
(6) The officer shall prepare a cer- Office Patent Trial Practice Guide. The
tified transcript by attaching a certifi- motion must include a certification
cate in the form of an affidavit signed that the moving party has in good
and sealed by the officer to the tran- faith conferred or attempted to confer
script of the deposition. Unless the par- with other affected parties in an effort
ties waive any of the following require- to resolve the dispute. The Board may,
ments, in which case the certificate for good cause, issue an order to pro-
shall so state, the certificate must tect a party or person from disclosing
state: confidential information, including,
495
§ 42.55 37 CFR Ch. I (7–1–16 Edition)
but not limited to, one or more of the serve, the confidential information
following: under seal. The patent owner may only
(1) Forbidding the disclosure or dis- access the sealed confidential informa-
covery; tion prior to the institution of the trial
(2) Specifying terms, including time by:
and place, for the disclosure or dis- (1) agreeing to the terms of the pro-
covery; tective order requested by the peti-
(3) Prescribing a discovery method tioner;
other than the one selected by the (2) agreeing to the terms of a protec-
party seeking discovery; tive order that the parties file jointly;
(4) Forbidding inquiry into certain or
matters, or limiting the scope of dis- (3) obtaining entry of a protective
closure or discovery to certain mat- order (e.g., the default protective
ters; order).
(5) Designating the persons who may
be present while the discovery is con- § 42.56 Expungement of confidential
ducted; information.
(6) Requiring that a deposition be After denial of a petition to institute
sealed and opened only by order of the a trial or after final judgment in a
Board; trial, a party may file a motion to ex-
(7) Requiring that a trade secret or punge confidential information from
other confidential research, develop- the record.
ment, or commercial information not
be revealed or be revealed only in a § 42.61 Admissibility.
specified way; and
(8) Requiring that the parties simul- (a) Evidence that is not taken,
taneously file specified documents or sought, or filed in accordance with this
information in sealed envelopes, to be subpart is not admissible.
opened as the Board directs. (b) Records of the Office. Certification
(b) [Reserved] is not necessary as a condition to ad-
missibility when the evidence to be
§ 42.55 Confidential information in a submitted is a record of the Office to
petition. which all parties have access.
A petitioner filing confidential infor- (c) Specification and drawings. A speci-
mation with a petition may, concur- fication or drawing of a United States
rent with the filing of the petition, file patent application or patent is admis-
a motion to seal with a proposed pro- sible as evidence only to prove what
tective order as to the confidential in- the specification or drawing describes.
formation. The institution of the re- If there is data in the specification or
quested trial will constitute a grant of a drawing upon which a party intends
the motion to seal unless otherwise or- to rely to prove the truth of the data,
dered by the Board. an affidavit by an individual having
(a) Default protective order. Where a first-hand knowledge of how the data
motion to seal requests entry of the de- was generated must be filed.
fault protective order set forth in the
Office Patent Trial Practice Guide, the § 42.62 Applicability of the Federal
rules of evidence.
petitioner must file, but need not
serve, the confidential information (a) Generally. Except as otherwise
under seal. The patent owner may only provided in this subpart, the Federal
access the filed sealed information Rules of Evidence shall apply to a pro-
prior to the institution of the trial by ceeding.
agreeing to the terms of the default (b) Exclusions. Those portions of the
protective order or obtaining relief Federal Rules of Evidence relating to
from the Board. criminal proceedings, juries, and other
(b) Protective orders other than default matters not relevant to proceedings
protective order. Where a motion to seal under this subpart shall not apply.
requests entry of a protective order (c) Modifications in terminology. Un-
other than the default protective order, less otherwise clear from context, the
the petitioner must file, but need not following terms of the Federal Rules of
496
Evidence shall be construed as indi- (2) When the exhibit is a paper:

cated: (i) Each page must be uniquely num-
Appellate court means United States bered in sequence; and
Court of Appeals for the Federal Cir- (ii) The exhibit label must be affixed
cuit. to the lower right corner of the first
Civil action, civil proceeding, and ac- page of the exhibit without obscuring
tion mean a proceeding before the information on the first page or, if ob-
Board under part 42. scuring is unavoidable, affixed to a du-
Courts of the United States, U.S. Mag- plicate first page.
istrate, court, trial court, trier of fact, and (e) Exhibit list. Each party must
judge mean Board.
maintain an exhibit list with the ex-
Hearing means, as defined in Federal
hibit number and a brief description of
Rule of Evidence 804(a)(5), the time for
each exhibit. If the exhibit is not filed,
taking testimony.
the exhibit list should note that fact. A
Judicial notice means official notice.
Trial or hearing in Federal Rule of current exhibit list must be served
Evidence 807 means the time for taking whenever evidence is served and the
testimony. current exhibit list must be filed when
(d) In determining foreign law, the filing exhibits.
Board may consider any relevant mate-
§ 42.64 Objection; motion to exclude.
rial or source, including testimony,
whether or not submitted by a party or (a) Deposition evidence. An objection
admissible under the Federal Rules of to the admissibility of deposition evi-
Evidence. dence must be made during the deposi-
tion. Evidence to cure the objection
§ 42.63 Form of evidence. must be provided during the deposi-
(a) Exhibits required. Evidence con- tion, unless the parties to the deposi-
sists of affidavits, transcripts of deposition stipulate otherwise on the deposi-
tions, documents, and things. All evi- tion record.
dence must be filed in the form of an (b) Other evidence. For evidence other
exhibit. than deposition evidence:
(b) Translation required. When a party (1) Objection. Any objection to evi-
relies on a document or is required to dence submitted during a preliminary
produce a document in a language proceeding must be filed within ten
other than English, a translation of the business days of the institution of the
document into English and an affidavit trial. Once a trial has been instituted,
attesting to the accuracy of the trans- any objection must be filed within five
lation must be filed with the docu- business days of service of evidence to
ment. which the objection is directed. The ob-
(c) Exhibit numbering. Each party’s jection must identify the grounds for
exhibits must be uniquely numbered the objection with sufficient particu-
sequentially in a range the Board larity to allow correction in the form
specifies. For the petitioner, the range of supplemental evidence.
is 1001–1999, and for the patent owner, (2) Supplemental evidence. The party
the range is 2001–2999. relying on evidence to which an objec-
(d) Exhibit format. An exhibit must tion is timely served may respond to
conform with the requirements for pa- the objection by serving supplemental
pers in § 42.6 and the requirements of evidence within ten business days of
this paragraph. service of the objection.
(1) Each exhibit must have an exhibit
(c) Motion to exclude. A motion to ex-
label.
clude evidence must be filed to pre-
(i) An exhibit filed with the petition
serve any objection. The motion must
must include the petitioner’s name fol-
identify the objections in the record in
lowed by a unique exhibit number.
order and must explain the objections.
(ii) For exhibits not filed with the pe-
tition, the exhibit label must include The motion may be filed without prior
the party’s name followed by a unique authorization from the Board.
exhibit number, the names of the par- [77 FR 48669, Aug. 14, 2012, as amended at 80
ties, and the trial number. FR 28565, May 19, 2015]
497
§ 42.65 37 CFR Ch. I (7–1–16 Edition)
§ 42.65 Expert testimony; tests and (c) Petition decisions. A decision by

data. the Board on whether to institute a
(a) Expert testimony that does not trial is final and nonappealable. A
disclose the underlying facts or data on party may request rehearing on a deci-
which the opinion is based is entitled sion by the Board on whether to insti-
to little or no weight. Testimony on tute a trial pursuant to paragraph (d)
United States patent law or patent ex- of this section. When rehearing a deci-
amination practice will not be admit- sion on petition, a panel will review
ted. the decision for an abuse of discretion.
(b) If a party relies on a technical (d) Rehearing. A party dissatisfied
test or data from such a test, the party with a decision may file a single re-
must provide an affidavit explaining: quest for rehearing without prior au-
(1) Why the test or data is being used; thorization from the Board. The burden
(2) How the test was performed and of showing a decision should be modi-
the data was generated; fied lies with the party challenging the
(3) How the data is used to determine decision. The request must specifically
a value; identify all matters the party believes
(4) How the test is regarded in the the Board misapprehended or over-
relevant art; and looked, and the place where each mat-
(5) Any other information necessary ter was previously addressed in a mo-
for the Board to evaluate the test and tion, an opposition, or a reply. A re-
data. quest for rehearing does not toll times
for taking action. Any request must be
ORAL ARGUMENT, DECISION, AND filed:
SETTLEMENT (1) Within 14 days of the entry of a
§ 42.70 Oral argument. non-final decision or a decision to in-
stitute a trial as to at least one ground
(a) Request for oral argument. A party of unpatentability asserted in the peti-
may request oral argument on an issue tion; or
raised in a paper at a time set by the (2) Within 30 days of the entry of a
Board. The request must be filed as a final decision or a decision not to insti-
separate paper and must specify the tute a trial.
issues to be argued.
(b) Demonstrative exhibits must be [77 FR 48669, Aug. 14, 2012, as amended at 80
served at least seven business days be- FR 28565, May 19, 2015]
fore the oral argument and filed no
later than the time of the oral argu- § 42.72 Termination of trial.
ment. The Board may terminate a trial
without rendering a final written deci-
FR 18765, Apr. 1, 2016] sion, where appropriate, including
where the trial is consolidated with an-
§ 42.71 Decision on petitions or mo- other proceeding or pursuant to a joint
tions. request under 35 U.S.C. 317(a) or 327(a).
(a) Order of consideration. The Board
§ 42.73 Judgment.
may take up petitions or motions for
decisions in any order, may grant, (a) A judgment, except in the case of
deny, or dismiss any petition or mo- a termination, disposes of all issues
tion, and may enter any appropriate that were, or by motion reasonably
order. could have been, raised and decided.
(b) Interlocutory decisions. A decision (b) Request for adverse judgment. A
on a motion without a judgment is not party may request judgment against
final for the purposes of judicial re- itself at any time during a proceeding.
view. If a decision is not a panel deci- Actions construed to be a request for
sion, the party may request that a adverse judgment include:
panel rehear the decision. When rehear- (1) Disclaimer of the involved appli-
ing a non-panel decision, a panel will cation or patent;
review the decision for an abuse of dis- (2) Cancellation or disclaimer of a
cretion. A panel decision on an issue claim such that the party has no re-
will govern the trial. maining claim in the trial;
498
(3) Concession of unpatentability or parties made in connection with, or in

derivation of the contested subject contemplation of, the termination of a
matter; and proceeding shall be in writing and a
(4) Abandonment of the contest. true copy shall be filed with the Board
(c) Recommendation. The judgment before the termination of the trial.
may include a recommendation for fur- (c) Request to keep separate. A party
ther action by an examiner or by the to a settlement may request that the
Director. settlement be treated as business con-
(d) Estoppel. (1) Petitioner other than in fidential information and be kept sepa-
derivation proceeding. A petitioner, or rate from the files of an involved pat-
the real party in interest or privy of ent or application. The request must be
the petitioner, is estopped in the Office filed with the settlement. If a timely
from requesting or maintaining a pro- request is filed, the settlement shall
ceeding with respect to a claim for only be available:
which it has obtained a final written (1) To a Government agency on writ-
decision on patentability in an inter ten request to the Board; or
partes review, post-grant review, or a (2) To any other person upon written
covered business method patent review, request to the Board to make the set-
on any ground that the petitioner tlement agreement available, along
raised or reasonably could have raised with the fee specified in § 42.15(d) and
during the trial, except that estoppel on a showing of good cause.
shall not apply to a petitioner, or to
the real party in interest or privy of CERTIFICATE
the petitioner who has settled under 35
U.S.C. 317 or 327. § 42.80 Certificate.
(2) In a derivation, the losing party After the Board issues a final written
who could have properly moved for re- decision in an inter partes review, post-
lief on an issue, but did not so move, grant review, or covered business
may not take action in the Office after method patent review and the time for
the judgment that is inconsistent with appeal has expired or any appeal has
that party’s failure to move, except terminated, the Office will issue and
that a losing party shall not be es- publish a certificate canceling any
topped with respect to any contested claim of the patent finally determined
subject matter for which that party to be unpatentable, confirming any
was awarded a favorable judgment. claim of the patent determined to be
(3) Patent applicant or owner. A patent patentable, and incorporating in the
applicant or owner is precluded from patent any new or amended claim de-
taking action inconsistent with the ad- termined to be patentable by operation
verse judgment, including obtaining in of the certificate.
any patent:
(i) A claim that is not patentably dis- Subpart B—Inter Partes Review
tinct from a finally refused or canceled
claim; or GENERAL
(ii) An amendment of a specification
or of a drawing that was denied during SOURCE: 77 FR 48727, Aug. 14, 2012, unless
the trial proceeding, but this provision otherwise noted.
does not apply to an application or pat-
ent that has a different written de- § 42.100 Procedure; pendency.
scription. (a) An inter partes review is a trial
subject to the procedures set forth in
§ 42.74 Settlement. subpart A of this part.
(a) Board role. The parties may agree (b) A claim in an unexpired patent
to settle any issue in a proceeding, but that will not expire before a final writ-
the Board is not a party to the settle- ten decision is issued shall be given its
ment and may independently deter- broadest reasonable construction in
mine any question of jurisdiction, pat- light of the specification of the patent
entability, or Office practice. in which it appears. A party may re-
(b) Agreements in writing. Any agree- quest a district court-type claim con-
ment or understanding between the struction approach to be applied if a
499
§ 42.101 37 CFR Ch. I (7–1–16 Edition)
party certifies that the involved patent the date of the termination of such
will expire within 18 months from the post-grant review.
entry of the Notice of Filing Date Ac- (b) The Director may impose a limit
corded to Petition. The request, accom- on the number of inter partes reviews
panied by a party’s certification, must that may be instituted during each of
be made in the form of a motion under the first four one-year periods in which
§ 42.20, within 30 days from the filing of the amendment made to chapter 31 of
the petition. title 35, United States Code, is in effect
(c) An inter partes review proceeding by providing notice in the Office’s Offi-
shall be administered such that pend- cial Gazette or FEDERAL REGISTER. Pe-
ency before the Board after institution titions filed after an established limit
is normally no more than one year. has been reached will be deemed un-
The time can be extended by up to six timely.
months for good cause by the Chief Ad- [77 FR 48727, Aug. 14, 2012, as amended at 78
ministrative Patent Judge, or adjusted FR 17874, Mar. 25, 2013]
by the Board in the case of joinder.
[77 FR 48727, Aug. 14, 2012, as amended at 81 § 42.103 Inter partes review fee.
FR 18766, Apr. 1, 2016] (a) An inter partes review fee set forth
in § 42.15(a) must accompany the peti-
§ 42.101 Who may petition for inter tion. (b) No filing date will be accorded
partes review. to the petition until full payment is re-
A person who is not the owner of a ceived.
patent may file with the Office a peti-
tion to institute an inter partes review § 42.104 Content of petition.
of the patent unless: In addition to the requirements of
(a) Before the date on which the peti- §§ 42.6, 42.8, 42.22, and 42.24, the petition
tion for review is filed, the petitioner must set forth:
or real party-in-interest filed a civil (a) Grounds for standing. The peti-
action challenging the validity of a tioner must certify that the patent for
claim of the patent; which review is sought is available for
(b) The petition requesting the pro- inter partes review and that the peti-
ceeding is filed more than one year tioner is not barred or estopped from
after the date on which the petitioner, requesting an inter partes review chal-
the petitioner’s real party-in-interest, lenging the patent claims on the
or a privy of the petitioner is served grounds identified in the petition.
with a complaint alleging infringement (b) Identification of challenge. Provide
of the patent; or a statement of the precise relief re-
(c) The petitioner, the petitioner’s quested for each claim challenged. The
real party-in-interest, or a privy of the statement must identify the following:
petitioner is estopped from challenging (1) The claim;
the claims on the grounds identified in (2) The specific statutory grounds
the petition. under 35 U.S.C. 102 or 103 on which the
challenge to the claim is based and the
§ 42.102 Time for filing. patents or printed publications relied
(a) A petition for inter partes review upon for each ground;
of a patent must be filed after the later (3) How the challenged claim is to be
of the following dates, where applica- construed. Where the claim to be con-
ble: strued contains a means-plus-function
(1) If the patent is a patent described or step-plus-function limitation as per-
in section 3(n)(1) of the Leahy-Smith mitted under 35 U.S.C. 112(f), the con-
America Invents Act, the date that is struction of the claim must identify
nine months after the date of the grant the specific portions of the specifica-
of the patent; tion that describe the structure, mate-
(2) If the patent is a patent that is rial, or acts corresponding to each
not described in section 3(n)(1) of the claimed function;
Leahy-Smith American Invents Act, (4) How the construed claim is
the date of the grant of the patent; or unpatentable under the statutory
(3) If a post-grant review is instituted grounds identified in paragraph (b)(2)

as set forth in subpart C of this part, of this section. The petition must
500
specify where each element of the ciency in the petition is not corrected
claim is found in the prior art patents within one month from the notice of an
or printed publications relied upon; and incomplete petition.
(5) The exhibit number of the sup-
porting evidence relied upon to support § 42.107 Preliminary response to peti-
the challenge and the relevance of the tion.
evidence to the challenge raised, in- (a) The patent owner may file a pre-
cluding identifying specific portions of liminary response to the petition. The
the evidence that support the chal- response is limited to setting forth the
lenge. The Board may exclude or give reasons why no inter partes review
no weight to the evidence where a should be instituted under 35 U.S.C. 314
party has failed to state its relevance and can include supporting evidence.
or to identify specific portions of the The preliminary response is subject to
evidence that support the challenge. the word count under § 42.24.
(c) A motion may be filed that seeks (b) Due date. The preliminary re-
to correct a clerical or typographical sponse must be filed no later than
mistake in the petition. The grant of three months after the date of a notice
such a motion does not change the fil- indicating that the request to institute
ing date of the petition. an inter partes review has been granted
a filing date. A patent owner may expe-
§ 42.105 Service of petition. dite the proceeding by filing an elec-
In addition to the requirements of tion to waive the patent owner prelimi-
§ 42.6, the petitioner must serve the pe- nary response.
tition and exhibits relied upon in the (c) [Reserved]
petition as follows: (d) No amendment. The preliminary
(a) The petition and supporting evi- response shall not include any amend-
dence must be served on the patent ment.
owner at the correspondence address of (e) Disclaim Patent Claims. The patent
record for the subject patent. The peti- owner may file a statutory disclaimer
tioner may additionally serve the peti- under 35 U.S.C. 253(a) in compliance
tion and supporting evidence on the with § 1.321(a) of this chapter, dis-
patent owner at any other address claiming one or more claims in the
known to the petitioner as likely to ef- patent. No inter partes review will be
fect service. instituted based on disclaimed claims.
(b) Upon agreement of the parties,
service may be made electronically. [77 FR 48727, Aug. 14, 2012, as amended at 81
FR 18766, Apr. 1, 2016]
Service may be by Priority Mail Ex-
press® or by means at least as fast and INSTITUTING Inter Partes REVIEW
reliable as Priority Mail Express®. Per-
sonal service is not required. § 42.108 Institution of inter partes re-
view.
FR 63043, Oct. 22, 2014] (a) When instituting inter partes re-
view, the Board may authorize the re-
§ 42.106 Filing date. view to proceed on all or some of the
(a) Complete petition. A petition to in- challenged claims and on all or some of
stitute inter partes review will not be the grounds of unpatentability asserted
accorded a filing date until the peti- for each claim.
tion satisfies all of the following re- (b) At any time prior to institution
quirements: of inter partes review, the Board may
(1) Complies with § 42.104; deny some or all grounds for
(2) Effects service of the petition on unpatentability for some or all of the
the correspondence address of record as challenged claims. Denial of a ground
provided in § 42.105(a); and is a Board decision not to institute
(3) Is accompanied by the fee to insti- inter partes review on that ground.
tute required in § 42.15(a). (c) Sufficient grounds. Inter partes re-
(b) Incomplete petition. Where a party view shall not be instituted for a
files an incomplete petition, no filing ground of unpatentability unless the
date will be accorded, and the Office Board decides that the petition sup-
will dismiss the petition if the defi- porting the ground would demonstrate
501
§ 42.120 37 CFR Ch. I (7–1–16 Edition)
that there is a reasonable likelihood presumption is that only one sub-

that at least one of the claims chal- stitute claim would be needed to re-
lenged in the petition is unpatentable. place each challenged claim, and it
The Board’s decision will take into ac- may be rebutted by a demonstration of
count a patent owner preliminary re- need.
sponse where such a response is filed, (b) Content. A motion to amend
including any testimonial evidence, claims must include a claim listing,
but a genuine issue of material fact which claim listing may be contained
created by such testimonial evidence in an appendix to the motion, show the
will be viewed in the light most favor- changes clearly, and set forth:
able to the petitioner solely for pur- (1) The support in the original disclo-
poses of deciding whether to institute sure of the patent for each claim that
an inter partes review. A petitioner may is added or amended; and
seek leave to file a reply to the pre- (2) The support in an earlier-filed dis-
liminary response in accordance with closure for each claim for which ben-
§§ 42.23 and 42.24(c). Any such request efit of the filing date of the earlier
must make a showing of good cause. filed disclosure is sought.
[77 FR 48727, Aug. 14, 2012, as amended at 81 (c) Additional motion to amend. In ad-
FR 18766, Apr. 1, 2016] dition to the requirements set forth in
paragraphs (a) and (b) of this section,
AFTER INSTITUTION OF Inter Partes any additional motion to amend may
REVIEW not be filed without Board authoriza-
§ 42.120 Patent owner response. tion. An additional motion to amend
may be authorized when there is a good
(a) Scope. A patent owner may file a cause showing or a joint request of the
response to the petition addressing any petitioner and the patent owner to ma-
ground for unpatentability not already terially advance a settlement. In deter-
denied. A patent owner response is filed mining whether to authorize such an
as an opposition and is subject to the additional motion to amend, the Board
page limits provided in § 42.24. will consider whether a petitioner has
(b) Due date for response. If no time submitted supplemental information
for filing a patent owner response to a after the time period set for filing a
petition is provided in a Board order, motion to amend in paragraph (a)(1) of
the default date for filing a patent this section.
owner response is three months from
the date the inter partes review was in- [77 FR 48727, Aug. 14, 2012, as amended at 80
stituted. FR 28566, May 19, 2015]
§ 42.121 Amendment of the patent. § 42.122 Multiple proceedings and

Joinder.
(a) Motion to amend. A patent owner
may file one motion to amend a patent, (a) Multiple proceedings. Where an-
but only after conferring with the other matter involving the patent is
Board. before the Office, the Board may during
(1) Due date. Unless a due date is pro- the pendency of the inter partes review
vided in a Board order, a motion to enter any appropriate order regarding
amend must be filed no later than the the additional matter including pro-
filing of a patent owner response. viding for the stay, transfer, consolida-
(2) Scope. A motion to amend may be tion, or termination of any such mat-
denied where: ter.
(i) The amendment does not respond (b) Request for joinder. Joinder may be
to a ground of unpatentability involved requested by a patent owner or peti-
in the trial; or tioner. Any request for joinder must be
(ii) The amendment seeks to enlarge filed, as a motion under § 42.22, no later
the scope of the claims of the patent or than one month after the institution
introduce new subject matter. date of any inter partes review for
(3) A reasonable number of substitute which joinder is requested. The time
claims. A motion to amend may cancel period set forth in § 42.101(b) shall not
a challenged claim or propose a reason- apply when the petition is accompanied

able number of substitute claims. The by a request for joinder.
502
§ 42.123 Filing of supplemental infor- struction approach to be applied if a

mation. party certifies that the involved patent
(a) Motion to submit supplemental in- will expire within 18 months from the
formation. Once a trial has been insti- entry of the Notice of Filing Date Ac-
tuted, a party may file a motion to corded to Petition. The request, accom-
submit supplemental information in panied by a party’s certification, must
accordance with the following require- be made in the form of a motion under
ments: § 42.20, within 30 days from the filing of
(1) A request for the authorization to the petition.
file a motion to submit supplemental (c) A post-grant review proceeding
information is made within one month shall be administered such that pend-
of the date the trial is instituted. ency before the Board after institution
(2) The supplemental information is normally no more than one year.
must be relevant to a claim for which The time can be extended by up to six
the trial has been instituted. months for good cause by the Chief Ad-
(b) Late submission of supplemental in- ministrative Patent Judge, or adjusted
formation. A party seeking to submit by the Board in the case of joinder.
supplemental information more than (d) Interferences commenced before
one month after the date the trial is September 16, 2012, shall proceed under
instituted, must request authorization part 41 of this chapter except as the
to file a motion to submit the informa- Chief Administrative Patent Judge,
tion. The motion to submit supple- acting on behalf of the Director, may
mental information must show why the otherwise order in the interests-of-jus-
supplemental information reasonably tice.
could not have been obtained earlier,
and that consideration of the supple- [77 FR 48729, Aug. 14, 2012, as amended at 81
FR 18766, Apr. 1, 2016]
mental information would be in the in-
terests-of-justice. § 42.201 Who may petition for a post-
(c) Other supplemental information. A grant review.
party seeking to submit supplemental
information not relevant to a claim for A person who is not the owner of a
which the trial has been instituted patent may file with the Office a peti-
must request authorization to file a tion to institute a post-grant review of
motion to submit the information. The the patent unless:
motion must show why the supple- (a) Before the date on which the peti-
mental information reasonably could tion for review is filed, the petitioner
not have been obtained earlier, and or real party-in-interest filed a civil
that consideration of the supplemental action challenging the validity of a
information would be in the interests- claim of the patent; or
of-justice. (b) The petitioner, the petitioner’s
real party-in-interest, or a privy of the
Subpart C—Post-Grant Review petitioner is estopped from challenging
the claims on the grounds identified in
the petition.
otherwise noted.
§ 42.202 Time for filing.
GENERAL (a) A petition for a post-grant review
of a patent must be filed no later than
§ 42.200 Procedure; pendency. the date that is nine months after the
(a) A post-grant review is a trial sub- date of the grant of a patent or of the
ject to the procedures set forth in sub- issuance of a reissue patent. A petition,
part A of this part. however, may not request a post-grant
(b) A claim in an unexpired patent review for a claim in a reissue patent
that will not expire before a final writ- that is identical to or narrower than a
ten decision is issued shall be given its claim in the original patent from
broadest reasonable construction in which the reissue patent was issued un-
light of the specification of the patent less the petition is filed not later than
in which it appears. A party may re- the date that is nine months after the
quest a district court-type claim con- date of the grant of the original patent.
503
§ 42.203 37 CFR Ch. I (7–1–16 Edition)
(b) The Director may impose a limit that fails to comply with the statutory
on the number of post-grant reviews grounds raised and state how the iden-
that may be instituted during each of tified subject matter fails to comply
the first four one-year periods in which with the statute; and
35 U.S.C. 321 is in effect by providing (5) The exhibit number of the sup-
notice in the Office’s Official Gazette porting evidence relied upon to support
or FEDERAL REGISTER. Petitions filed the challenge and the relevance of the
after an established limit has been evidence to the challenge raised, in-
reached will be deemed untimely. cluding identifying specific portions of
the evidence that support the chal-
§ 42.203 Post-grant review fee. lenge. The Board may exclude or give
(a) A post-grant review fee set forth no weight to the evidence where a
in § 42.15(b) must accompany the peti- party has failed to state its relevance
tion. or to identify specific portions of the
(b) No filing date will be accorded to evidence that support the challenge.
the petition until full payment is re- (c) A motion may be filed that seeks
ceived. to correct a clerical or typographical
mistake in the petition. The grant of
§ 42.204 Content of petition. such a motion does not change the fil-
In addition to the requirements of ing date of the petition.
§§ 42.6, 42.8, 42.22, and 42.24, the petition § 42.205 Service of petition.
must set forth:
(a) Grounds for standing. The peti- In addition to the requirements of
tioner must certify that the patent for § 42.6, the petitioner must serve the pe-
which review is sought is available for tition and exhibits relied upon in the
post-grant review and that the peti- petition as follows:
tioner is not barred or estopped from (a) The petition and supporting evi-
requesting a post-grant review chal- dence must be served on the patent
lenging the patent claims on the owner at the correspondence address of
grounds identified in the petition. record for the subject patent. The peti-
(b) Identification of challenge. Provide tioner may additionally serve the peti-
a statement of the precise relief re- tion and supporting evidence on the
quested for each claim challenged. The patent owner at any other address
statement must identify the following: known to the petitioner as likely to ef-
(1) The claim; fect service.
(2) The specific statutory grounds (b) Upon agreement of the parties,
permitted under 35 U.S.C. 282(b)(2) or service may be made electronically.
(3) on which the challenge to the claim Service may be by Priority Mail Ex-
is based; press® or by means at least as fast and
(3) How the challenged claim is to be reliable as Priority Mail Express®. Per-
construed. Where the claim to be con- sonal service is not required.
strued contains a means-plus-function [77 FR 48669, Aug. 14, 2012, as amended at 79
or step-plus-function limitation as per- FR 63043, Oct. 22, 2014]
mitted under 35 U.S.C. 112(f), the con-
struction of the claim must identify § 42.206 Filing date.
the specific portions of the specifica- (a) Complete petition. A petition to in-
tion that describe the structure, mate- stitute a post-grant review will not be
rial, or acts corresponding to each accorded a filing date until the peti-
claimed function; tion satisfies all of the following re-
(4) How the construed claim is quirements:
unpatentable under the statutory (1) Complies with § 42.204 or § 42.304, as
grounds identified in paragraph (b)(2) the case may be,
of this section. Where the grounds for (2) Effects service of the petition on
unpatentability are based on prior art, the correspondence address of record as
the petition must specify where each provided in § 42.205(a); and
element of the claim is found in the (3) Is accompanied by the filing fee in
prior art. For all other grounds of § 42.15(b).
unpatentability, the petition must (b) Incomplete petition. Where a party

identify the specific part of the claim files an incomplete petition, no filing
504
date will be accorded and the Office (c) Sufficient grounds. Post-grant re-
will dismiss the request if the defi- view shall not be instituted for a
ciency in the petition is not corrected ground of unpatentability unless the
within the earlier of either one month Board decides that the petition sup-
from the notice of an incomplete peti- porting the ground would, if
tion, or the expiration of the statutory unrebutted, demonstrate that it is
deadline in which to file a petition for more likely than not that at least one
post-grant review. of the claims challenged in the petition
is unpatentable. The Board’s decision
§ 42.207 Preliminary response to peti- will take into account a patent owner
tion. preliminary response where such a re-
(a) The patent owner may file a pre- sponse is filed, including any testi-
liminary response to the petition. The monial evidence, but a genuine issue of
response is limited to setting forth the material fact created by such testi-
reasons why no post-grant review monial evidence will be viewed in the
should be instituted under 35 U.S.C. 324 light most favorable to the petitioner
and can include supporting evidence. solely for purposes of deciding whether
The preliminary response is subject to to institute a post-grant review. A pe-
the word count under § 42.24. titioner may seek leave to file a reply
(b) Due date. The preliminary re- to the preliminary response in accord-
sponse must be filed no later than ance with §§ 42.23 and 42.24(c). Any such
three months after the date of a notice request must make a showing of good
indicating that the request to institute cause.
a post-grant review has been granted a (d) Additional grounds. Sufficient
filing date. A patent owner may expe- grounds under § 42.208(c) may be a
dite the proceeding by filing an elec- showing that the petition raises a
tion to waive the patent owner prelimi- novel or unsettled legal question that
nary response. is important to other patents or patent
(c) [Reserved] applications.
(d) No amendment. The preliminary [77 FR 48729, Aug. 14, 2012, as amended at 81
response shall not include any amend- FR 18766, Apr. 1, 2016]
ment.
(e) Disclaim Patent Claims. The patent AFTER INSTITUTION OF POST-GRANT
owner may file a statutory disclaimer REVIEW
under 35 U.S.C. 253(a) in compliance
with § 1.321(a), disclaiming one or more § 42.220 Patent owner response.
claims in the patent. No post-grant re- (a) Scope. A patent owner may file a
view will be instituted based on dis- response to the petition addressing any
claimed claims. ground for unpatentability not already
[77 FR 48729, Aug. 14, 2012, as amended at 81 denied. A patent owner response is filed
FR 18766, Apr. 1, 2016] as an opposition and is subject to the
page limits provided in § 42.24.
INSTITUTING POST-GRANT REVIEW (b) Due date for response. If no date
for filing a patent owner response to a
§ 42.208 Institution of post-grant repetition is provided in a Board order,
view. the default date for filing a patent
(a) When instituting post-grant re- owner response is three months from
view, the Board may authorize the re- the date the post-grant review is insti-
view to proceed on all or some of the tuted.
challenged claims and on all or some of
the grounds of unpatentability asserted § 42.221 Amendment of the patent.
for each claim. (a) Motion to amend. A patent owner
(b) At any time prior to institution may file one motion to amend a patent,
of post-grant review, the Board may but only after conferring with the
deny some or all grounds for Board.
unpatentability for some or all of the (1) Due date. Unless a due date is pro-
challenged claims. Denial of a ground vided in a Board order, a motion to
is a Board decision not to institute amend must be filed no later than the
post-grant review on that ground. filing of a patent owner response.
505
§ 42.222 37 CFR Ch. I (7–1–16 Edition)
(2) Scope. A motion to amend may be tion, or termination of any such mat-
denied where: ter.
(i) The amendment does not respond (b) Request for joinder. Joinder may be
to a ground of unpatentability involved requested by a patent owner or peti-
in the trial; or tioner. Any request for joinder must be
(ii) The amendment seeks to enlarge filed, as a motion under § 42.22, no later
the scope of the claims of the patent or than one month after the institution
introduce new subject matter. date of any post-grant review for which
(3) A reasonable number of substitute joinder is requested.
claims. A motion to amend may cancel
a challenged claim or propose a reason- § 42.223 Filing of supplemental infor-
able number of substitute claims. The mation.
presumption is that only one sub- (a) Motion to submit supplemental in-
stitute claim would be needed to re- formation. Once a trial has been insti-
place each challenged claim, and it tuted, a party may file a motion to
may be rebutted by a demonstration of submit supplemental information in
need. accordance with the following require-
(b) Content. A motion to amend ments:
claims must include a claim listing, (1) A request for the authorization to
which claim listing may be contained file a motion to submit supplemental
in an appendix to the motion, show the information is made within one month
changes clearly, and set forth: of the date the trial is instituted.
(1) The support in the original disclo- (2) The supplemental information
sure of the patent for each claim that must be relevant to a claim for which
is added or amended; and the trial has been instituted.
(2) The support in an earlier-filed dis- (b) Late submission of supplemental in-
closure for each claim for which ben- formation. A party seeking to submit
efit of the filing date of the earlier supplemental information more than
filed disclosure is sought. one month after the date the trial is
(c) Additional motion to amend. In ad- instituted, must request authorization
dition to the requirements set forth in to file a motion to submit the informa-
paragraphs (a) and (b) of this section, tion. The motion to submit supple-
any additional motion to amend may mental information must show why the
not be filed without Board authoriza- supplemental information reasonably
tion. An additional motion to amend could not have been obtained earlier,
may be authorized when there is a good and that consideration of the supple-
cause showing or a joint request of the mental information would be in the in-
petitioner and the patent owner to ma- terests-of-justice.
terially advance a settlement. In deter- (c) Other supplemental information. A
mining whether to authorize such an party seeking to submit supplemental
additional motion to amend, the Board information not relevant to a claim for
will consider whether a petitioner has which the trial has been instituted
submitted supplemental information must request authorization to file a
after the time period set for filing a motion to submit the information. The
motion to amend in paragraph (a)(1) of motion must show why the supple-
this section. mental information reasonably could
[77 FR 48729, Aug. 14, 2012, as amended at 80 not have been obtained earlier, and
FR 28566, May 19, 2015] that consideration of the supplemental
information would be in the interests-
§ 42.222 Multiple proceedings and of-justice.
Joinder.
§ 42.224 Discovery.
(a) Multiple proceedings. Where an-
other matter involving the patent is Notwithstanding the discovery provi-
before the Office, the Board may during sions of subpart A:
the pendency of the post-grant review (a) Requests for additional discovery
enter any appropriate order regarding may be granted upon a showing of good
the additional matter including pro- cause as to why the discovery is need-
viding for the stay, transfer, consolida- ed; and
506
(b) Discovery is limited to evidence § 42.301 Definitions.

directly related to factual assertions In addition to the definitions in § 42.2,
advanced by either party in the pro- the following definitions apply to pro-
ceeding. ceedings under this subpart D:
(a) Covered business method patent
Subpart D—Transitional Program means a patent that claims a method
for Covered Business Method or corresponding apparatus for per-
Patents forming data processing or other oper-
ations used in the practice, administra-
tion, or management of a financial
product or service, except that the
otherwise noted.
term does not include patents for tech-
§ 42.300 Procedure; pendency. nological inventions.
(b) Technological invention. In deter-
(a) A covered business method patent mining whether a patent is for a tech-
review is a trial subject to the proce- nological invention solely for purposes
dures set forth in subpart A of this part of the Transitional Program for Cov-
and is also subject to the post-grant re- ered Business Methods (section
view procedures set forth in subpart C 42.301(a)), the following will be consid-
except for §§ 42.200, 42.201, 42.202, and ered on a case-by-case basis: whether
42.204. the claimed subject matter as a whole
(b) A claim in an unexpired patent recites a technological feature that is
that will not expire before a final writ- novel and unobvious over the prior art;
ten decision is issued shall be given its and solves a technical problem using a
broadest reasonable construction in technical solution.
light of the specification of the patent [77 FR 48753, Aug. 14, 2012]
in which it appears. A party may a re-
quest a district court-type claim con- § 42.302 Who may petition for a cov-
struction approach to be applied if a ered business method patent re-
party certifies that the involved patent view.
will expire within 18 months from the (a) A petitioner may not file with the
entry of the Notice of Filing Date Ac- Office a petition to institute a covered
corded to Petition. The request, accom- business method patent review of the
panied by a party’s certification, must patent unless the petitioner, the peti-
be made in the form of a motion under tioner’s real party-in-interest, or a
§ 42.20, within 30 days from the filing of privy of the petitioner has been sued
the petition. for infringement of the patent or has
been charged with infringement under
(c) A covered business method patent
that patent. Charged with infringe-
review proceeding shall be adminis-
ment means a real and substantial con-
tered such that pendency before the
troversy regarding infringement of a
Board after institution is normally no covered business method patent exists
more than one year. The time can be such that the petitioner would have
extended by up to six months for good standing to bring a declaratory judg-
cause by the Chief Administrative Pat- ment action in Federal court.
ent Judge, or adjusted by the Board in (b) A petitioner may not file a peti-
the case of joinder. tion to institute a covered business
(d) The rules in this subpart are ap- method patent review of the patent
plicable until September 15, 2020, ex- where the petitioner, the petitioner’s
cept that the rules shall continue to real party-in-interest, or a privy of the
apply to any petition for a covered petitioner is estopped from challenging
business method patent review filed be- the claims on the grounds identified in
fore the date of repeal. the petition.
(c) A petitioner may not file a peti-
tion to institute a covered business
FR 28566, May 19, 2015; 81 FR 18766, Apr. 1,
method patent review of the patent
2016]
where, before the date on which the pe-
tition is filed, the petitioner or real
507
§ 42.303 37 CFR Ch. I (7–1–16 Edition)
party-in-interest filed a civil action unpatentability, the petition must

challenging the validity of a claim of identify the specific part of the claim
the patent. that fails to comply with the statutory
grounds raised and state how the iden-
FR 28566, May 19, 2015] tified subject matter fails to comply
with the statute; and
§ 42.303 Time for filing. (5) The exhibit number of supporting
A petition requesting a covered busi- evidence relied upon to support the
ness method patent review may be filed challenge and the relevance of the evi-
any time except during the period in dence to the challenge raised, includ-
which a petition for a post-grant re- ing identifying specific portions of the
view of the patent would satisfy the re- evidence that support the challenge.
quirements of 35 U.S.C. 321(c). The Board may exclude or give no
weight to the evidence where a party
§ 42.304 Content of petition. has failed to state its relevance or to
identify specific portions of the evi-
In addition to any other notices re-
dence that support the challenge.
quired by subparts A and C of this part,
(c) A motion may be filed that seeks
a petition must request judgment
to correct a clerical or typographical
against one or more claims of a patent mistake in the petition. The grant of
identified by patent number. In addi-
such a motion does not change the fil-
tion to the requirements of §§ 42.6, 42.8,
ing date of the petition.
42.22, and 42.24 the petition must set
forth:
(a) Grounds for standing. The peti- Subpart E—Derivation
tioner must demonstrate that the pat-
ent for which review is sought is a cov- SOURCE: 77 FR 56090, Sep. 11, 2012, unless
ered business method patent, and that otherwise noted.
the petitioner meets the eligibility re-
quirements of § 42.302. § 42.400 Procedure; pendency
(b) Identification of challenge. Provide (a) A derivation proceeding is a trial
a statement of the precise relief re- subject to the procedures set forth in
quested for each claim challenged. The subpart A of this part.
statement must identify the following: (b) The Board may for good cause au-
(1) The claim; thorize or direct the parties to address
(2) The specific statutory grounds patentability issues that arise in the
permitted under paragraph (2) or (3) of course of the derivation proceeding.
35 U.S.C. 282(b), except as modified by
section 18(a)(1)(C) of the Leahy-Smith § 42.401 Definitions.
America Invents Act (Pub. L. 112–29, In addition to the definitions in § 42.2,
125 Stat. 284 (2011)), on which the chal- the following definitions apply to pro-
lenge to the claim is based; ceedings under this subpart:
(3) How the challenged claim is to be Agreement or understanding under 35
construed. Where the claim to be con- U.S.C. 135(e) means settlement for the
strued contains a means-plus-function purposes of § 42.74.
or step-plus-function limitation as per- Applicant includes a reissue appli-
mitted under 35 U.S.C. 112(f), the con- cant.
struction of the claim must identify Application includes both an applica-
the specific portions of the specification for an original patent and an ap-
tion that describe the structure, mate- plication for a reissued patent.
rial, or acts corresponding to each First publication means either a pat-
claimed function; ent or an application publication under
(4) How the construed claim is 35 U.S.C. 122(b), including a publication
unpatentable under the statutory of an international application desig-
grounds identified in paragraph (b)(2) nating the United States as provided
of this section. Where the grounds for by 35 U.S.C. 374.
unpatentability are based on prior art, Petitioner means a patent applicant
the petition must specify where each who petitions for a determination that
element of the claim is found in the another party named in an earlier-filed

prior art. For all other grounds of patent application allegedly derived a
508
claimed invention from an inventor (i) Show why the claimed invention
named in the petitioner’s application is the same or substantially the same
and filed the earlier application with- as the invention disclosed to the re-
out authorization. spondent, and
Respondent means a party other than (ii) Identify how the claim is to be
the petitioner. construed. Where the claim to be con-
Same or substantially the same means strued contains a means-plus-function
patentably indistinct. or step-plus-function limitation as per-
mitted under 35 U.S.C. 112(f), the con-
§ 42.402 Who may file a petition for a struction of the claim must identify
derivation proceeding. the specific portions of the specifica-
An applicant for patent may file a pe- tion that describe the structure, mate-
tition to institute a derivation pro- rial, or acts corresponding to each
ceeding in the Office. claimed function.
(c) Sufficiency of showing. A deriva-
§ 42.403 Time for filing. tion showing is not sufficient unless it
A petition for a derivation pro- is supported by substantial evidence,
ceeding must be filed within the one- including at least one affidavit ad-
year period beginning on the date of dressing communication of the derived
the first publication of a claim to an invention and lack of authorization
invention that is the same or substan- that, if unrebutted, would support a de-
tially the same as the earlier applica- termination of derivation. The showing
tion’s claim to the allegedly derived in- of communication must be corrobo-
vention. rated.
§ 42.404 Derivation fee. § 42.406 Service of petition.

(a) A derivation fee set forth in In addition to the requirements of
§ 42.15(c) must accompany the petition. § 42.6, the petitioner must serve the pe-
(b) No filing date will be accorded to tition and exhibits relied upon in the
the petition until payment is complete. petition as follows:
(a) The petition and supporting evi-
§ 42.405 Content of petition. dence must be served on the respondent
(a) Grounds for standing. The petition at the correspondence address of record
must: for the earlier application or subject
(1) Demonstrate compliance with patent. The petitioner may addition-
§§ 42.402 and 42.403; and ally serve the petition and supporting
(2) Show that the petitioner has at evidence on the respondent at any
least one claim that is: other address known to the petitioner
(i) The same or substantially the as likely to effect service.
same as the respondent’s claimed in- (b) Upon agreement of the parties,
vention; and service may be made electronically.
(ii) The same or substantially the Service may be by Priority Mail Ex-
same as the invention disclosed to the press® or by means at least as fast and
respondent. reliable as Priority Mail Express®. Per-
(b) In addition to the requirements of sonal service is not required.
§§ 42.8 and 42.22, the petition must: [77 FR 48669, Aug. 14, 2012, as amended at 79
(1) Provide sufficient information to FR 63043, Oct. 22, 2014]
identify the application or patent for
which the petitioner seeks a derivation § 42.407 Filing date.
proceeding; (a) Complete petition. A petition to in-
(2) Demonstrate that a claimed institute a derivation proceeding will not
vention was derived from an inventor be accorded a filing date until the peti-
named in the petitioner’s application, tion satisfies all of the following re-
and that the inventor from whom the quirements:
invention was derived did not authorize (1) Complies with §§ 42.404 and 42.405,
the filing of the earliest application and
claiming such invention; and (2) Service of the petition on the cor-
(3) For each of the respondent’s respondence address of record as pro-

claims to the derived invention, vided in § 42.406.
509
§ 42.408 37 CFR Ch. I (7–1–16 Edition)
(b) Incomplete petition. Where the pe- and that judgment thereon can be en-
titioner files an incomplete petition, tered by the Board;
no filing date will be accorded, and the (v) Provides that a copy of the agree-
Office will dismiss the petition if the ment is filed within 20 days after its
deficiency in the petition is not cor- execution; and
rected within the earlier of either one (vi) Provides that the arbitration is
month from notice of the incomplete completed within the time the Board
petition, or the expiration of the statu- sets.
tory deadline in which to file a petition (c) The parties are solely responsible
for derivation. for the selection of the arbitrator and
the conduct of the arbitration.
INSTITUTING DERIVATION PROCEEDING (d) The Board may determine issues
§ 42.408 Institution of derivation pro- the arbitration does not resolve.
ceeding. (e) The Board will not consider the
arbitration award unless it:
(a) An administrative patent judge (1) Is binding on the parties;
institutes, and may as necessary re- (2) Is in writing;
institute, the derivation proceeding on (3) States in a clear and definite man-
behalf of the Director. ner each issue arbitrated and the dis-
(b) Additional derivation proceeding.
position of each issue; and
The petitioner may suggest the addi-
(4) Is filed within 20 days of the date
tion of a patent or application to the
of the award.
derivation proceeding. The suggestion
(f) Once the award is filed, the parties
should make the showings required
to the award may not take actions in-
under § 42.405 and explain why the sug-
consistent with the award. If the award
gestion could not have been made in
is dispositive of the contested subject
the original petition.
matter for a party, the Board may
AFTER INSTITUTION OF DERIVATION enter judgment as to that party.
PROCEEDING
§ 42.411 Common interests in the in-
§ 42.409 Settlement agreements. vention.
An agreement or understanding The Board may decline to institute,
under 35 U.S.C. 135(e) is a settlement or if already instituted the Board may
for the purposes of § 42.74. issue judgment in, a derivation pro-
ceeding between an application and a
§ 42.410 Arbitration. patent or another application that are
(a) Parties may resort to binding ar- commonly owned.
bitration to determine any issue. The
§ 42.412 Public availability of Board
Office is not a party to the arbitration. records.
The Board is not bound by, and may
independently determine, any question (a) Publication. (1) Generally. Any
of patentability. Board decision is available for public
(b) The Board will not set a time for, inspection without a party’s permis-
or otherwise modify the proceeding for, sion if rendered in a file open to the
an arbitration unless: public pursuant to § 1.11 of this chapter
(1) It is to be conducted according to or in an application that has been pub-
Title 9 of the United States Code; lished in accordance with §§ 1.211 to
(2) The parties notify the Board in 1.221 of this chapter. The Office may
writing of their intention to arbitrate; independently publish any Board deci-
(3) The agreement to arbitrate: sion that is available for public inspec-
(i) Is in writing; tion.
(ii) Specifies the issues to be arbi- (2) Determination of special cir-
trated; cumstances. Any Board decision not
(iii) Names the arbitrator, or pro- publishable under paragraph (a)(1) of
vides a date not more than 30 days this section may be published or made
after the execution of the agreement available for public inspection if the
for the selection of the arbitrator; Director believes that special cir-
(iv) Provides that the arbitrator’s cumstances warrant publication and a

award shall be binding on the parties party does not petition within two
510
months after being notified of the in- with the Patent Trial and Appeal
tention to make the decision public, Board in the appropriate manner pro-
objecting in writing on the ground that vided in § 41.10(a), 41.10(b), or 42.6(b).
the decision discloses the objecting (2) In all appeals, the party initiating
party’s trade secret or other confiden- the appeal must comply with the re-
tial information and stating with spec- quirements of the Federal Rules of Ap-
ificity that such information is not pellate Procedure and Rules for the
otherwise publicly available. United States Court of Appeals for the
(b) Record of proceeding. (1) The Federal Circuit, including:
record of a Board proceeding is avail- (i) Serving the requisite number of
able to the public, unless a patent ap- copies on the Court; and
plication not otherwise available to the (ii) Paying the requisite fee for the
public is involved. appeal.
(2) Notwithstanding paragraph (b)(1) (3) Additional requirements. (i) In ap-
of this section, after a final Board deci-
peals arising out of an ex parte reexam-
sion in or judgment in a Board pro-
ination proceeding ordered pursuant to
ceeding, the record of the Board pro-
§ 1.525, notice of the appeal must be
ceeding will be made available to the
served as provided in § 1.550(f) of this
public if any involved file is or becomes
title.
open to the public under § 1.11 of this
chapter or an involved application is or (ii) In appeals arising out of an inter
becomes published under §§ 1.211 to 1.221 partes review, a post-grant review, a
of this chapter. covered business method patent review,
or a derivation proceeding, notice of
the appeal must provide sufficient in-
PART 90—JUDICIAL REVIEW OF formation to allow the Director to de-
PATENT TRIAL AND APPEAL termine whether to exercise the right
BOARD DECISIONS to intervene in the appeal pursuant to
35 U.S.C. 143, and it must be served as
Sec. provided in § 42.6(e) of this title.
90.1 Scope. (b) For a notice of election under 35
90.2 Notice; service.
U.S.C. 141(d) to proceed under 35 U.S.C.
90.3 Time for appeal or civil action.
146. (1) Pursuant to 35 U.S.C. 141(d), if
AUTHORITY: 35 U.S.C. 2(b)(2). an adverse party elects to have all fur-
SOURCE: 77 FR 48677, Aug. 14, 2012, unless ther review proceedings conducted
otherwise noted. under 35 U.S.C. 146 instead of under 35
U.S.C. 141, that party must file a notice
§ 90.1 Scope. of election with the United States Pat-
The provisions herein govern judicial ent and Trademark Office as provided
review for Patent Trial and Appeal in § 104.2.
Board decisions under chapter 13 of (2) A copy of the notice of election
title 35, United States Code. Judicial must also be filed with the Patent
review of decisions arising out of inter Trial and Appeal Board in the manner
partes reexamination proceedings that provided in § 42.6(b).
are requested under 35 U.S.C. 311, and (3) A copy of the notice of election
where available, judicial review of deci- must also be served where necessary
sions arising out of interferences de- pursuant to § 42.6(e).
clared pursuant to 35 U.S.C. 135 con- (c) For a civil action under 35 U.S.C.
tinue to be governed by the pertinent 146. The party initiating an action
regulations in effect on July 1, 2012. under 35 U.S.C. 146 must file a copy of
the complaint no later than five busi-
§ 90.2 Notice; service. ness days after filing the complaint in
(a) For an appeal under 35 U.S.C. 141. district court with the Patent Trial
(1) In all appeals, the notice of appeal and Appeal Board in the manner pro-
required by 35 U.S.C. 142 must be filed vided in § 42.6(b), and the Office of the
with the Director of the United States Solicitor pursuant to § 104.2. Failure to
Patent and Trademark Office as pro- comply with this requirement can re-
vided in § 104.2 of this title. A copy of sult in further action within the
the notice of appeal must also be filed United States Patent and Trademark
511
§ 90.3 37 CFR Ch. I (7–1–16 Edition)
Office consistent with the final Board (b) Time computation. (1) Rehearing. A
decision. timely request for rehearing will reset
the time for appeal or civil action to no
§ 90.3 Time for appeal or civil action. later than sixty-three (63) days after
(a) Filing deadline. (1) For an appeal action on the request. Any subsequent
under 35 U.S.C. 141. The notice of appeal request for rehearing from the same
filed pursuant to 35 U.S.C. 142 must be party in the same proceeding will not
filed with the Director of the United reset the time for seeking judicial re-
States Patent and Trademark Office no view, unless the additional request is
later than sixty-three (63) days after permitted by order of the Board.
the date of the final Board decision. (2) Holidays. If the last day for filing
Any notice of cross-appeal is controlled an appeal or civil action falls on a Fed-
by Rule 4(a)(3) of the Federal Rules of eral holiday in the District of Colum-
Appellate Procedure, and any other re- bia, the time is extended pursuant to 35
quirement imposed by the Rules of the U.S.C. 21(b).
United States Court of Appeals for the (c) Extension of time. (1) The Director,
Federal Circuit. or his designee, may extend the time
(2) For a notice of election under 35 for filing an appeal, or commencing a
U.S.C. 141(d). The time for filing a no- civil action, upon written request if:
tice of election under 35 U.S.C. 141(d) is (i) Requested before the expiration of
governed by 35 U.S.C. 141(d). the period for filing an appeal or com-
(3) For a civil action under 35 U.S.C. 145 mencing a civil action, and upon a
or 146. (i) A civil action must be com- showing of good cause; or
menced no later than sixty-three (63) (ii) Requested after the expiration of
days after the date of the final Board the period for filing an appeal of com-
decision. mencing a civil action, and upon a
(ii) The time for commencing a civil showing that the failure to act was the
action pursuant to a notice of election result of excusable neglect.
under 35 U.S.C. 141(d) is governed by 35 (2) The request must be filed as pro-
U.S.C. 141(d). vided in § 104.2 of this title.
512
INDEX III—RULES RELATING TO PRACTICE BEFORE
THE PATENT AND TRADEMARK OFFICE
EDITORIAL NOTE: This listing is provided for informational purposes only. It is compiled and
kept current by the Department of Commerce. This index is updated as of July 1, 2016.
Section
A
Address change .................................................................................................. 11.11
Advertising.................................................................................. 11.701, 11.702, 11.703
Agreements restricting practice ...................................................................... 11.506
Aliens .......................................................................................... 11.6, 11.7, 11.9, 11.14
Applicant for patent, representation of ..................................................... 1.31, 11.10
Applicant for trademark, representation of ........................................................ 2.11
Attorneys, recognition of to practice in trademark cases................................. 11.14
Attorneys, registration of to practice in patent cases ......................... 11.6, 11.7, 11.9
B
Breach of trust ................................................................................................. 11.804
Business transactions or relations with client................................................. 11.108
C
Candidate for judicial office ............................................................................. 11.802
Certificate of mailing .................................................................................. 1.8, 11.18
Circumventing a disciplinary rule ................................................................... 11.804
Rules of Professional Conduct................................................................ 11.101–11.901
Committee on Discipline.......................................................... 11.2, 11.22, 11.23, 11.32
Communicating with person having adverse interest ................. 11.401, 11.402, 11.403
Communications concerning practitioner’s service.......... 11.701, 11.702, 11.703, 11.704
Compensation for legal services ............................................................ 11.105, 11.108
Competence............................................................................................ 11.101, 11.103
Complaint instituting disciplinary proceedings ....................................... 11.32, 11.34
Concealment of material information.............................................................. 11.804
Conduct in proceeding before Office ................................................................. 11.303
Conduct prejudicial to the administration of justice....................................... 11.804
Conflict of interest ........................................................... 11.107, 11.108, 11.110, 11.111
Conviction of criminal offense .......................................................... 11.7, 11.19, 11.25
D
Deceit ............................................................................................................... 11.804
Decisions of the USPTO Director ............................................................. 11.56, 11.57
Definitions:
Agent................................................................................................................ 11.6
Attorney........................................................................................................... 11.1
Director of Enrollment and Discipline ............................................................. 11.1
Grievance ......................................................................................................... 11.1
Fraud................................................................................................................ 11.1
Law firm........................................................................................................... 11.1
Lawyer ............................................................................................................. 11.1
Office ................................................................................................................ 11.1
513
Partner ............................................................................................................. 11.1

Person .............................................................................................................. 11.1
Practitioner ..................................................................................................... 11.1
Proceeding before the Office ............................................................................ 11.1
Registration ..................................................................................................... 11.1
Respondent ..................................................................................................... 11.34
State................................................................................................................. 11.1
Tribunal .......................................................................................................... 11.11
Writing ............................................................................................................. 11.1
United States ................................................................................................... 11.1
Designation as registered attorney or agent.................................................... 11.704
Direct contact with prospective clients ........................................................... 11.703
Director of Enrollment and Discipline ................................................................ 11.2
Review of decisions of the Director.................................................................. 11.2
Disbarment from practice on ethical grounds............................................ 11.7, 11.19
Discharge of attorney or agent by client ......................................................... 11.116
Disciplinary Proceedings and Investigations:
Administrative Procedures Act .................................................... 11.32, 11.39, 11.44
Amendment of complaint ............................................................................... 11.45
Amendment of pleadings ................................................................................ 11.45
Answer to complaint....................................................................................... 11.36
Appeal of initial decision of Hearing officer ................................................... 11.55
Burden of proof ............................................................................................... 11.49
Certificate of mailing ............................................................................... 1.8, 11.41
Complaint ....................................................................................................... 11.34
Contested case ................................................................................................ 11.38
Deliberations of Committee on Discipline...................................................... 11.23
Discovery (see also Discovery in Disciplinary Proceedings)........................... 11.52
Exception to ruling......................................................................................... 11.50
Filing papers after complaint filed ................................................................. 11.41
Hearing officer ................................................................................................ 11.39
Hearings before hearing officer....................................................................... 11.44
Initial decision of hearing officer .......................................................... 11.39, 11.54
Instituting a disciplinary proceeding ............................................................. 11.32
Investigations of violations of disciplinary rules.................................... 11.2, 11.22
Notice of suspension or exclusion of practitioner........................................... 11.59
Objections to evidence .................................................................................... 11.50
Post hearing memorandum............................................................................. 11.53
Pre-hearing statement.................................................................................... 11.52
Reinstatement of suspended or excluded practitioner.................................... 11.60
Reprimand of registered attorney or agent ........................................... 11.20, 11.59
Resignation of practitioner ............................................................................ 11.11
Review of decision denying reinstatement of practitioner .............................. 11.2
Review of interlocutory orders by Administrative Law Judge....................... 11.39
Review of USPTO Director’s final decision .................................................... 11.57
Savings clause ............................................................................................... 11.901
Service of complaint ....................................................................................... 11.35
Settlement of complaint................................................................................. 11.26
Stay pending review of interlocutory order.................................................... 11.39
Discourteous conduct ....................................................................................... 11.804
Discovery in Disciplinary Proceedings:
Copying of documents..................................................................................... 11.52
Depositions ................................................................................... 11.39, 11.50, 11.51
Evidence ................................................................................................ 11.50, 11.52
Impeachment .................................................................................................. 11.52
Inspection of documents ................................................................................. 11.52
Interrogatories ............................................................................................... 11.52
Motions filed with hearing officer ......................................................... 11.43, 11.52
514
Index III
Privileged information ................................................................................... 11.52

Undue delay in proceedings ............................................................................ 11.52
Division of legal fees ........................................................................................ 11.105
Duress, use of ......................................................................................... 11.703, 11.804
E
Employee testimony. (See Testimony by Office employee)
Employment:
Declining or terminating representation ...................................................... 11.116
Failure to carry out contract........................................................................ 11.103
Refusing employment.......................................... 11.107, 11.108, 11.109, 11.110, 11.307
Withdrawal from employment .................. 11.107, 11.108, 11.109, 11.110, 11.116, 11.307
Exception to ruling............................................................................................ 11.50
Excessive legal fees .......................................................................................... 11.105
Exclusion of practitioner ................................................................. 11.20, 11.27, 11.58
F
Failure to disclose material fact with regard to registration .......................... 11.801
Failure to notify client.......................................................................... 11.104, 11.804
False accusations................................................................................... 11.401, 11.804
False statements concerning officials......................................... 11.401, 11.802, 11.804
Fees:
In general ......................................................................................................... 1.21
Petition to review decision of Director of Enrollment and Dis-
cipline ........................................................................................................ 11.2
Registration ..................................................................................................... 11.8
Registration examination ................................................................................ 11.7
Reinstatement ................................................................................................ 11.11
Fees for legal services ...................................................................................... 11.105
Firm name, use of ............................................................................................ 11.705
Fitness to practice before the Office...................................................... 11.803, 11.804
Foreigners ................................................................................... 11.6, 11.7, 11.9, 11.14
Former Patent and Trademark Office employees............................ 11.7, 11.10, 11.111
Fraud or inequitable conduct ...................... 11.102, 11.106, 11.116, 11.303, 11.401, 11.804
Funds of client, preserving identity of .................................................. 11.105, 11.115
G
Gift, improperly bestowing .............................................................................. 11.108
Government employees, registration of to practice in patent cases ....... 11.10, 11.111
I
Illegal conduct involving moral turpitude ............................................... 11.7, 11.804
Illegal fees for services..................................................................................... 11.105
Improper alteration of patent application ....................................................... 11.804
Improper execution of oath or declaration ...................................................... 11.804
Improper influence................................................................................. 11.305, 11.804
Improper signature ............................................................................................ 11.18
Incompetence......................................................................................... 11.101, 11.103
Independent professional judgment, exercise of.... 11.107, 11.108, 11.109, 11.110, 11.307,
11.504
Individual unqualified in respect to character, education, etc. ........ 11.7, 11.7, 11.801
Influence by others than client ................... 11.107, 11.108, 11.109, 11.110, 11.307, 11.504
Information precluding registration, failure to disclose .......................... 11.7, 11.801
Initial decision of Administrative Law Judge .......................................... 11.39, 11.54
Integrity and competence of the legal profession, maintaining of................... 11.801
Interest in litigation or proceeding before Office, acquiring of ....................... 11.108
515
Investigations of violations of disciplinary rules................................................ 11.2
J
Judicial office, candidate for............................................................................ 11.802
L
Legal Fees:
Division of ..................................................................................................... 11.105
Failure to pay ............................................................................................... 11.116
Sharing of...................................................................................................... 11.105
Letterheads, use of ........................................................................................... 11.705
Limited recognition to practice in patent cases ................................................. 11.9
M
Malpractice, limiting client’s liability ............................................................ 11.108
Materially false statements in application for registration ............................ 11.801
Misappropriation of funds...................................................................... 11.804, 11.115
Misconduct ....................................................................................................... 11.804
Misrepresentations......................................................................... 11.7, 11.701, 11.804
Multiple employment ....................................................... 11.107, 11.108, 11.109, 11.110
N
Neglecting legal matters............................................................. 11.101, 11.103, 11.104
Non-practitioner, formation of partnership with .................................. 11.117, 11.504
Notice of suspension or exclusion ...................................................................... 11.59
O
Oath requirement ................................................................................................ 11.8
Officials, contact with...................................................................................... 11.305
P
Petitions:
Fees in general ................................................................................................. 1.21
Reinstatement ................................................................................................ 11.60
Review decision of USPTO Director ............................................................... 11.57
Review decision of Director of Enrollment and Discipline .............................. 11.2
Suspension of rules........................................................................................... 11.3
Practitioner responsibilities.................................................................. 11.501, 11.502
Preserve secrets and confidence of client .............................................. 11.106, 11.118
Pro-se applicant........................................................................................... 1.31, 2.11
Professional impropriety, avoiding appearance of........................ 1.110, 11.111, 11.112
Property of client............................................................................................. 11.115
Proprietary interest in subject matter ............................................................ 11.108
Publication ............................................................................. 11.11, 11.35, 11.59, 11.60
R
Recognition to Practice Before the Patent and Trademark Office:
Agents............................................................................................ , 11.6, 11.7, 11.14
Aliens ....................................................................................... 11.6, 11.7, 11.9, 11.14

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

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Title 37—Patents,

CHAPTER I—United States Patent and Trademark Office, De-

90 Judicial review of Patent Trial and Appeal Board

Index III—Rules relating to practice before the

150 Requests for Presidential proclamations pursuant

PATENTS 1.28 Refunds when small entity status is

a non-final Office action. 1.152 Design drawings.

1.412 The United States Receiving Office.

due to examination delay. 1.807 Viability of deposit.

1.983 Appeal to the United States Court of

1.1042 Correspondence respecting inter-

Post Office Box specified in paragraphs should be additionally marked ‘‘Mail

(4) All correspondence concerning a lation of this requirement will be sub-

and Trademark Office with decorum cation, patent, or other proceeding.

periods, apostrophes, or hyphens for document signed by another under

simile transmission, of the certifi- cation by the Patent and Trademark

number of the international applica- ceeding should identify it as such by

Sunday, or Federal holiday within the continued prosecution application

the last day fixed by statute or by or would be mailed or transmitted on or

(2) The procedure described in para- correspondence, or after the applica-

and Appeal Board proceedings, see

an international design application the correspondence and the date of de-

this paragraph must be corroborated and official notation entered by the

particular date in the Office, provided ence is the original correspondence or a

and copies of other records or papers application may be provided to any

the published application, or a specific under Hague Agreement Article 10(3). A

contents of the application, or a spe- 365(c), or 386(c) in an application that

laws or regulations that would be of until the expiration of thirty months

(iii) With respect to the Examination ticipating foreign intellectual property

access or copies of all or part of an ap- § 1.15 [Reserved]

application, an application that does

filing date of the application, or an ap- By other than a small or

By a micro entity (§ 1.29) ....... $150.00 tional 50 sheets or fraction thereof:

(b) For fees in proceedings before the

from issue. was submitted for the patent applica-

§ 1.221—for requesting voluntary pub- § 1.48—for correction of inventorship

prescribed by § 1.51(c)(1) in a provi- By a micro entity (§ 1.29) ...... $255.00

By other than a small or (a) Uncertified copies of patent appli-

unless the original document is in

[78 FR 4287, Jan. 18, 2013, as amended at 80

(5) If the excess claims fees (f) For maintaining an

(§ 1.27(a)) .................... $800.00 of a patent.

Initial application for in- (1) For admission to examination for

(e) International type search reports: tion, patent, or other proceeding in

Patent and Trademark Office must be

(c) A fee transmittal letter may be fees in an international design applica-

plication or with a particular paper company name and deposit account

cating such charge, and include a copy

application or patent in which entitle- (3) Assertion by payment of the small

if the inventor is the applicant; or the status of any other application or

the applications or patents. The re- as a small entity may thereafter be

in paragraph (a)(3) or (4) of this sec- (g) A certification of entitlement to

once in an application or patent. Micro (j) Any attempt to fraudulently es-

erroneously paid as a micro entity is § 1.32 Power of attorney.

lection of a patent practitioner.

(3) Give the representative power to preclude a practitioner from acting

address to be used for the continuing powers of attorney previously given.

(a) The word ‘‘applicant’’ when used § 1.44 [Reserved]

of the international registration under cerning the execution of a substitute

THE APPLICATION statement may be filed in a provisional

nonprovisional applications. See § 1.97 (3) The provisions of this paragraph

font size of 6); and tion papers may be made before or

or declaration referring to those appli- Memory (CD–ROM) or a Compact Disc-

(2) A compact disc as used in this substitute information, and must be