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INTELLECTUAL PROPERTY RIGHTS

NATIONAL LEGISLATION - USA

Patent Laws and Regulations

Regulations: Title 37, Chapter I (Subchapter A, Parts 1, 3, 5, 7, 10, 15, and 15a and Subchapter B); Chapter IV and Chapter V, Code of Federal Regulations


TITLE 37 – CODE OF FEDERAL REGULATIONS

PATENTS, TRADEMARKS, AND COPYRIGHTS



CHAPTER 1 – PATENT AND TRADEMARK OFFICE, DEPARTMENT OF COMMERCE

SUBCHAPTER A – GENERAL

PART 1 – RULES OF PRACTICE IN PATENT CASES

SUBPART A – GENERAL PROVISIONS

GENERAL INFORMATION AND CORRESPONDENCE

Sec.     
1.1   Address for correspondence with the Patents and Trademark Office.
1.2   Business to be transacted in writing.
1.3   Business to be conducted with decorum and courtesy.
1.4   Nature of correspondence and signature requirements.
1.5   Identification of application, patent, or registration.
1.6   Receipt of correspondence.
1.7   Times for taking action; expiration on Saturday, Sunday, or Federal holiday.
1.8   Certificate of mailing or transmission.
1.9   Definitions.
1.10   Filing of papers and fees by “Express Mail” with certificate.

RECORDS AND FILES OF THE PATENT AND TRADEMARK OFFICE

1.11    Files open to the public.
1.12   Assignment records open to public inspection.
1.13   Copies and certified copies.
1.14   Patent applications preserved in confidence.
1.15   Requests for identifiable records.


FEES AND PAYMENT OF MONEY

1.16    National application filing fees.
1.17   Patent application processing fees.
1.18   Patent issue fees.
1.19   Document supply fees.
1.20   Post-issuance fees.
1.21   Miscellaneous fees and charges.
1.22   Fees payable in advance.
1.23   Method of payment.
1.24   Coupons.
1.25   Deposit accounts.
1.26   Refunds.
1.27   Statement of status as small entity.
1.28   Effect on fees of failure to establish status, or change status, as a small entity.


SUBPART B – NATIONAL PROCESSING PROVISIONS

PROSECUTION OF APPLICATION AND APPOINTMENT OF ATTORNEY OR AGENT

1.31    Applicants may be represented by a registered attorney or agent.
1.32   [Reserved]
1.33   Correspondence respecting patent applications, reexamination proceedings, and other proceedings.
1.34   Recognition for representation.
1.36   Revocation of power of attorney or authorization; withdrawal of attorney or agent.


WHO MAY APPLY FOR A PATENT

1.41    Applicant for patent.
1.42   When the inventor is dead.
1.43   When the inventor is insane or legally incapacitated.
1.44   Proof of authority.
1.45   Joint inventors.
1.46   Assigned inventions and patents.
1.47   Filing when an inventor refuses to sign or cannot be reached.
1.48   Correction of inventorship.


THE APPLICATION

1.51    General requisites of an application.
1.52   Language, paper, writing, margins.
1.53   Application number, filing date, and completion of application.
1.54   Parts of application to be filed together; filing receipt.
1.55   Claim for foreign priority.
1.56   Duty to disclose information material to patentability.
1.57   [Reserved]
1.58   Chemical and mathematical formulas and tables.
1.59   Papers of application with filing date not to be returned.
1.60   [Reserved]
1.61   [Reserved]
1.62   [Reserved]

 
OATH OR DECLARATION

1.63    Oath or declaration.
1.64   Person making oath or declaration.
1.66   Officers authorized to administer oaths.
1.67   Supplemental oath or declaration.
1.68   Declaration in lieu of oath.
1.69   Foreign language oaths and declarations.
1.70   [Reserved]


SPECIFICATION

1.71    Detailed description and specification of the invention.
1.72   Title and abstract.
1.73   Summary of the invention.
1.74   Reference to drawings.
1.75   Claim (s).
1.77   Arrangement of application elements.
1.78   Claiming benefit of earlier filing date and cross-references to other applications.
1.79   Reservation clauses not permitted.


THE DRAWINGS

1.81    Drawings required in patent application.
1.83   Content of drawing.
1.84   Standards for drawings.
1.85   Corrections to drawings.
1.88   [Reserved]


MODELS, EXHIBITS, SPECIMENS

1.91    Models not generally required as part of application or patent.
1.92   [Reserved]
1.93   Specimens.
1.94   Return of models, exhibits, or specimens.
1.95   Copies of exhibits.
1.96   Submission of computer program listings.


INFORMATION DISCLOSURE STATEMENT

1.97    Filing of information disclosure statement.
1.98   Content of information disclosure statement.
1.99   [Reserved]


EXAMINATION OF APPLICATIONS

1.101    [Reserved]
1.102   Advancement of examination.
1.103   Suspension of action.
1.104   Nature of examination.
1.105   [Reserved]
1.106   [Reserved]
1.107   [Reserved]
1.108   [Reserved]
1.109   [Reserved]
1.110   Inventorship and date of invention of the subject matter of individual claims.


ACTION BY APPLICANT AND FURTHER CONSIDERATION

1.111    Reply by applicant or patent owner.
1.112   Reconsideration before final action.
1.113   Final rejection or action.
1.115   [Reserved]
1.116   Amendments after final action or appeal.
1.117   [Reserved]
1.118   [Reserved]
1.119   [Reserved]
1.121   Manner of making amendments.
1.122   [Reserved]
1.123   [Reserved]
1.124   [Reserved]
1.125   Substitute specification.
1.126   Numbering of claims.
1.127   Petition from refusal to admit amendment.


TRANSITIONAL PROVISIONS

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


AFFIDAVITS OVERCOMING REJECTIONS

1.130    Affidavit or declaration to disqualify commonly owned patent as prior art.
1.131   Affidavit or declaration of prior invention to overcome cited patent or publication.
1.132   Affidavits or declarations traversing grounds of rejection.


INTERVIEWS

1.133    Interviews.


TIME FOR RESPONSE BY APPLICANT

ABANDONMENT OF APPLICATION

1.134    Time period for response to an Office action.
1.135   Abandonment for failure to respond within time period.
1.136   Filing of timely responses with petition and fee for extension of time and extensions of time for cause.
1.137   Revival of abandoned application.
1.138   Express abandonment.
1.139   [Reserved]


JOINDER OF INVENTIONS IN ONE APPLICATION; RESTRICTION

1.141    Different inventions in one national application.
1.142   Requirement for restriction.
1.143   Reconsideration of requirement.
1.144   Petition from requirement for restriction.
1.145   Subsequent presentation of claims for different invention.
1.146   Election of species.


DESIGN PATENTS

1.151    Rules applicable.
1.152   Design drawings.
1.153   Title, description and claim, oath or declaration.
1.154   Arrangement of specification.
1.155   Issue and term of design patents.


PLANT PATENTS

1.161    Rules applicable.
1.162   Applicant, oath or declaration.
1.163   Specification.
1.164   Claim.
1.165   Plant drawings.
1.166   Specimens.
1.167   Examinations.


REISSUES

1.171    Application for reissue.
1.172   Applicants’ assignees.
1.173   Specification.
1.174   Drawings.
1.175   Reissue oath or declaration.
1.176   Examination of reissue.
1.177   Reissue in divisions.
1.178   Original patent.
1.179   Notice of reissue application.


PETITIONS AND ACTIONS BY THE COMMISSIONER

1.181    Petition to the Commissioner.
1.182   Questions not specifically provided for.
1.183   Suspension of rules.
1.184   [Reserved]


APPEAL TO THE BOARD OF PATENT APPEALS AND INTERFERENCES

1.191    Appeal to Board of Patent Appeals and Interferences.
1.192   Appellant’s brief.
1.193   Examiner’s answer.
1.194   Oral hearing.
1.195   Affidavits or declarations after appeal.
1.196   Decision by the Board of Patent Appeals and Interferences.
1.197   Action following decision.
1.198   Reopening after decision.


MISCELLANEOUS PROVISIONS

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


PROTESTS AND PUBLIC USE PROCEEDINGS

1.291    Protests by the public against pending applications.
1.292   Public use proceedings.
1.293   Statutory invention registration.
1.294   Examination of request for publication of a statutory invention registration and patent application to which the request is directed.
1.295   Review of decision finally refusing to publish a statutory invention registration.
1.296   Withdrawal of request for publication of statutory invention registration.
1.297   Publication of statutory invention registration.


REVIEW OF PATENT AND TRADEMARK

OFFICE DECISIONS BY COURT

1.301    Appeal to U.S. Court of Appeals for the Federal Circuit.
1.302   Notice of Appeal.
1.303   Civil action under 35 U.S.C. 145, 146, 306.
1.304   Time for appeal or civil action.


ALLOWANCE AND ISSUE OF PATENT

1.311    Notice of Allowance.
1.312   Amendments after allowance.
1.313   Withdrawal from issue.
1.314   Issuance of patent.
1.315   Delivery of patent.
1.316   Application abandoned for failure to pay issue fee.
1.317   Lapsed patents; delayed payment of balance of issue fee.
1.318   [Removed and Reserved]


DISCLAIMER

1.321    Statutory disclaimers, including terminal disclaimers.


CORRECTION OF ERRORS IN PATENT

1.322    Certificate of correction of Office mistake.
1.323   Certification of correction of applicant’s mistake.
1.324   Correction of inventorship in patent.
1.325   Other mistakes not corrected.


ARBITRATION AWARDS

1.331    [Reserved]
1.332   [Reserved]
1.333   [Reserved]
1.334   [Reserved]
1.335   Filing notice of arbitration awards.


AMENDMENT OF RULES

1.351    Amendments to rules will be published.
1.352   [Reserved]


MAINTENANCE FEES

1.362    Time for payment of maintenance fees.
1.363   Fee address for maintenance fee purposes.
1.366   Submission of maintenance fees.
1.377   Review of decision refusing to accept and record payment of a maintenance fee filed prior to expiration of patent.
1.378   Acceptance of delayed payment of maintenance fee in expired patent to reinstate.


SUBPART C – INTERNATIONAL PROCESSING PROVISIONS

GENERAL INFORMATION

1.401    Definitions of terms under the Patent Cooperation Treaty.
1.412   The United States Receiving Office.
1.413   The United States International Searching Authority.
1.414   The United States Patent and Trademark Office as a Designated Office or Elected Office.
1.415   The International Bureau.
1.416   The United States International Preliminary Examining Authority.


WHO MAY FILE AN INTERNATIONAL APPLICATION

1.421    Applicant for international application.
1.422   When the inventor is dead.
1.423   When the inventor is insane or legally incapacitated.
1.424   Joint inventors.
1.425   Filing by other than inventor.


THE INTERNATIONAL APPLICATION

1.431    International application requirements.
1.432   Designation of States and payment of designation and confirmation fees.
1.433   Physical requirements of international application.
1.434   The request.
1.435   The description.
1.436   The claims.
1.437   The drawings.
1.438   The abstract.


FEES

1.445    International application filing, processing, and search fees.
1.446   Refund of international application filing and processing fees.


PRIORITY

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


REPRESENTATION

1.455    Representation in international applications.


TRANSMITTAL OF RECORD COPY

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


TIMING

1.465    Timing of application processing based on the priority date.
1.468   Delays in meeting time limits.


AMENDMENTS

1.471    Corrections and amendments during international processing.
1.472   Changes in person, name, or address of applicants and inventors.


UNITY OF INVENTION

1.475    Unity of invention before the International Searching Authority, the International Preliminary Examining Authority, and during the national stage.
1.476   Determination of unity of invention before the International Searching Authority.
1.477   Protest to lack of unity of invention before the International Searching Authority.


INTERNATIONAL PRELININARY EXAMINATION

1.480    Demand for international preliminary examination.
1.481   Payment of international preliminary examination fees.
1.482   International preliminary examination fees.
1.484   Conduct of international preliminary examination.
1.485   Amendments by applicant during international preliminary examination.
1.487   [Reserved]
1.488   Determination of unity of invention before the International Preliminary Examining Authority.
1.489   Protest to lack of unity of invention before the International Preliminary
Examining Authority.


NATIONAL STAGE

1.491    Entry into the national stage.
1.492   National stage fees.
1.494   Entering the national stage in the United States of America as a Designated
Office.
1.495   Entering the national in the United States of America as an Elected
Office.
1.496   Examination of international applications in the national stage.
1.497   Oath or declaration under 35 U.S.C. 371(c)(4)
1.499   Unity of invention during the national stage.


SUBPART D – REEXAMINATION OF PATENTS

CITATION OF PRIOR ART

1.501    Citation of prior art in patent files.


REQUEST FOR REEXAMINATION

1.510    Request for reexamination.
1.515   Determination of the request for reexamination.
1.520   Reexamination at the initiative of the Commissioner.


REEXAMINATION

1.525    Order to reexamine.
1.530   Statement; amendment by patent owner.
1.535   Reply by requester.
1.540   Consideration of responses.
1.550   Conduct of reexamination proceedings.
1.552   Scope of reexamination in reexamination proceedings.
1.555   Information material to patentability in reexamination proceedings.
1.560   Interviews in reexamination proceedings.
1.565   Concurrent office proceedings.


CERTIFICATE

1.570    Issuance of reexamination certificate after reexamination proceedings.


SUBPART E – INTERFERENCES

1.601    Scope of rules, definitions.
1.602   Interest in applications and patents involved in an interference.
1.603   Interference between applications; subject matter of the interference.
1.604   Request for interference between applications by an applicant.
1.605   Suggestion of claim to applicant by examiner.
1.606   Interference between an application and a patent; subject matter of the interference.
1.607   Request by applicant for interference with patent.
1.608   Interference between an application and a patent; prima facie showing by applicant.
1.609   Preparation of interference papers by examiner.
1.610   Assignment of interference to examiner-in-chief, time period for completing interference.
1.611   Declaration of interference.
1.612   Access to applications.
1.613   Lead attorney, same attorney representing different parties in an interference, withdrawal of attorney or agent.
1.614   Jurisdiction over interference.
1.615   Suspension of ex parte prosecution.
1.616   Sanctions for failure to comply with rules or order.
1.617   Summary judgement against applicant.
1.618   Return of unauthorized papers.
1.621   Preliminary statement; time for filing, notice of filing.
1.622   Preliminary statement; who made invention, where invention made.
1.623   Preliminary statement; invention made in United States.
1.624   Preliminary statement; invention made abroad.
1.625   Preliminary statement; derivation by an opponent.
1.626   Preliminary statement; earlier application.
1.627   Preliminary statement; sealing before filing, opening of statement.
1.628   Preliminary statement; correction of error.
1.629   Effect of preliminary statement.
1.630   Reliance on earlier application.
1.631   Access to preliminary statement, service of preliminary statement.
1.632   Notice of intent to argue abandonment, suppression, or concealment by opponent.
1.633   Preliminary motions.
1.634   Motion to correct inventorship.
1.635   Miscellaneous motions.
1.636   Motions, time for filing.
1.637   Content of motions.
1.638   Opposition and reply; time for filing opposition and reply.
1.639   Evidence in support of motion, opposition, or reply.
1.640   Motions, hearing and decision, redeclaration of interference, order to show cause.
1.641   Unpatentability discovered by examiner-in-chief.
1.642   Addition of application or patent to interference.
1.643   Prosecution of interference by assignee.
1.644   Petitions in interferences.
1.645   Extension of time, late papers, stay of proceedings.
1.646   Service of papers, proof of service.
1.647   Translation of document in foreign language.
1.651   Setting times for discovery and taking testimony, parties entitled to take testimony.
1.652   Judgement for failure to take testimony or file record.
1.653   Record and exhibits.
1.654   Final hearing.
1.655   Matters considered in rendering a final decision.
1.656   Briefs for final hearing.
1.657   Burden of proof as to date of invention.
1.658   Final decision.
1.659   Recommendation.
1.660   Notice of reexamination, reissue, protest, or litigation.
1.661   Termination of interference after judgement.
1.662   Request for entry of adverse judgement; reissue filed by patentee.
1.663   Status of claim of defeated applicant after interference.
1.664   Action after interference.
1.665   Second interference.
1.666   Filing of interference settlement agreements.
1.671   Evidence must comply with rules.
1.672   Manner of taking testimony.
1.673   Notice of examination of witness.
1.674   Persons before whom depositions may be taken.
1.675   Examination of witness, reading and signing transcript of deposition.
1.676   Certification and filing by officer, marking exhibits.
1.677   Form of an affidavit or a transcript of deposition.
1.678   Time for filing transcript of deposition.
1.679   Inspection of transcript.
1.682   Official records and printed publications.
1.683   Testimony in another interference, proceeding, or action.
1.684   [Reserved]
1.685   Errors and irregularities in depositions.
1.687   Additional discovery.
1.688   Use of discovery.
1.690   Arbitration of interferences.


SUBPART F – EXTENSION OF PATENT TERM

1.701    Extension of patent term due to prosecution delay.
1.710   Patents subject to extension of the patent term.
1.720   Conditions for extension of patent term.
1.730   Applicant for extension of patent term.
1.740   Application for extension of patent term.
1.741   Filing date of application.
1.750   Determination of eligibility for extension of patent term.
1.760   Interim extension of patent term under 35 U.S.C. 156(e)(2).
1.765   Duty of disclosure in patent term extension proceedings.
1.770   Express withdrawal of application for extension of patent term.
1.775   Calculation of patent term extension for a human drug, antibiotic drug or human biological product.
1.776   Calculation of patent term extension for a food additive or color additive.
1.777   Calculation of patent term extension for a medical device.
1.778   Calculation of patent term extension for an animal drug product.
1.779   Calculation of patent term extension for a veterinary biological product.
1.780   Certificate of extension of patent term.
1.785   Multiple applications for extension of term of the same patent or of different patents for the same regulatory review period for a product.
1.790   Interim extension of patent term under 35 U.S.C. 156(d)(5).
1.791   Termination of interim extension granted prior to regulatory approval of a product for commercial marketing or use.


SUBPART G – BIOTECHNOLOGY INVENTION DISCLOSURES

DEPOSIT OF BIOLOGICAL MATERIAL

1.801    Biological material.
1.802   Need or opportunity to make a deposit.
1.803   Acceptable depository.
1.804   Time of making an original deposit.
1.805   Replacement or supplement of deposit.
1.806   Term of deposit.
1.807   Viability of deposit.
1.808   Furnishing samples.
1.809   Examination procedures.


APPLICATION DISCLOSURES CONTAINING NUCLEOTIDE AND/OR AMINO ACID SEQUENCES

1.821    Nucleotide and/or amino acid sequence disclosures in patent applications.
1.822   Symbols and format to be used for nucleotide and/or amino acid sequence data.
1.823   Requirements for nucleotide and/or amino acid sequences as part of the application papers.
1.824   Form and format for nucleotide and/or amino acid sequence submissions in computer readable form.
1.825   Amendments to or replacement of sequence listing and computer readable copy thereof.
Appendix A   Sample Sequence Listing
Appendix B   Headings for Information Items in 1.823.