So, Bank0Bucko maybe this post will allow you some info:
uspto.gov
1.67 Supplemental oath or declaration.
* * * * *
(b) A supplemental oath or declaration meeting the
requirements of 1.63 must be filed: (1) When a claim is
presented for matter originally shown or described but not
substantially embraced in the statement of invention or
claims originally presented; and (2) When an oath or
declaration submitted in accordance with 1.53(d)>(1)<
after the filing of the specification and any required
drawings specifically and improperly refers to an amendment
which includes new matter. No new matter may be introduced
into an application after its filing date even if a
supplemental oath or declaration is filed[( 1.53(b);
1.118)]. In proper cases the oath or declaration here
required may be made on information and belief by an
applicant other than inventor.
* * * * *
20. Section 1.78 is proposed to be amended by revising
paragraphs (a)(1) and (a)(2) and by adding new paragraphs
(a)(3) and (a)(4) to read as follows:
1.78 Claiming benefit of earlier filing date and cross-
references to other applications.
(a)(1) An application >other than a provisional application<
may claim an invention disclosed in a prior filed copending
national application >filed under 1.53(b)(1) or 1.62
(not a provisional application (see paragraph (a)(3) of this
section))< or international application designating the
United States of America. In order for an application to
claim the benefit of a prior filed copending national
application, the prior application must name as an inventor
at least one inventor named in the later filed application
and disclose the named inventor's invention claimed in at
least one claim of the later filed application in the manner
provided by the first paragraph of 35 U.S.C. 112. In
addition, the prior application must be
(i) complete as set forth in 1.51(a)(1); or
(ii) entitled to a filing date as set forth in
1.53(b)>(1) or 1.62< and include the basic filing fee
set forth in 1.16[; or]
[(iii) entitled to a filing date as set forth in
1.53(b) and have paid therein the processing and retention
fee set forth in 1.21(l) within the time period set forth
in 1.53(d)].
(2) Any application claiming the benefit of a prior filed
copending national or international application >other than
a provisional application< must contain or be amended to
contain in the first sentence of the specification following
the title a reference to such prior application, identifying
it by application number (consisting of the series code and
serial number)[, or serial number and filing date] or
international application number and international filing
date and indicating the relationship of the applications.
Cross-references to other related applications may be made
when appropriate. (See 1.14(b).)
>(3) An application other than for a design patent may claim
an invention disclosed in a prior filed copending
provisional application filed under 1.53(b)(2). A
provisional application can be pending for no more than
twelve months. In order for an application to claim the
benefit of a prior filed copending provisional application,
the prior provisional application must name as an inventor
at least one inventor named in the later filed application
and disclose the named inventor's invention claimed in at
least one claim of the later filed application in the manner
provided by the first paragraph of 35 U.S.C. 112. In
addition, the prior provisional application must be
(i) complete as set forth in 1.51(a)(2); or
(ii) entitled to a filing date as set forth in
1.53(b)(2) and include the basic filing fee set forth in
1.16(k).
(4) Any application claiming the benefit of a prior filed
copending provisional application must contain or be amended
to contain in the first sentence of the specification
following the title a reference to such prior provisional
application, identifying it as a provisional application,
and including the provisional application number (consisting
of series code and serial number) and indicating the
relationship of the applications.<
* * * * *
21. Section 1.83 is proposed to be amended by revising
paragraphs (a) and (c) to read as follows:
1.83 Content of drawing.
(a)>(1)< The drawing >in an application other than a
provisional application< must show every feature of the
invention specified in the claims. However, conventional
features disclosed in the description and claims, where
their detailed illustration is not essential for a proper
understanding of the invention, should be illustrated in the
drawing in the form of a graphical drawing symbol or a
labeled representation (e.g. a labeled rectangular box).
>(2) The drawing in a provisional application filed
under 1.53(b)(2) must show every feature of the invention
disclosed in the description where necessary to understand
the subject matter of that invention. However, conventional
features disclosed in the description, where their detailed
illustration is not essential for a proper understanding of
the invention, should be illustrated in the drawing in the
form of a graphical drawing symbol or a labeled
representation (e.g. a labeled rectangular box).<
* * * * *
(c) Where the drawings do not comply with the
requirements of paragraphs (a)>(1)< and (b) of this section,
the examiner shall require such additional illustration
within a time period of not less than two months from the
date of the sending of a notice thereof. Such corrections
are subject to the requirements of 1.81(d).
22. Section 1.97 is proposed to be amended by revising
paragraph (d) to read as follows:
1.97 Filing of information disclosure statement.
* * * * *
(d) An information disclosure statement shall be
considered by the Office if filed after the mailing date of
either:
(1) A final action under 1.113 or
(2) A notice of allowance under 1.311,
whichever occurs first, but before payment of the issue fee,
provided the statement is accompanied by:
(i) A certification as specified in paragraph (e) of
this section,
(ii) A petition requesting consideration of the
information disclosure statement, and
(iii) The petition fee set forth in 1.17(i)[(1)].
* * * * *
23. Section 1.101 is proposed to be amended by revising
paragraph (a) to read as follows:
1.101 Order of examination.
(a) Applications filed in the Patent and Trademark
Office and accepted as complete applications>, except for
provisional applications filed under 1.53(b)(2) which are
not examined,< are assigned for examination to the
respective examining groups having the classes of inventions
to which the applications relate. Applications shall be
taken up for examination by the examiner to whom they have
been assigned in the order in which they have been filed
except for those applications in which examination has been
advanced pursuant to 1.102. See 1.496 for order of
examination of International applications in the national
stage.
* * * * *
24. Section 1.102 is proposed to be amended by revising
paragraph (d) to read as follows:
1.102 Advancement of examination.
* * * * *
(d) A petition to make an application special on
grounds other than those referred to in paragraph (c) of
this section must be accompanied by the petition fee set
forth in 1.17(i)[(2)].
25. Section 1.103 is proposed to be amended by revising
paragraph (a) to read as follows:
1.103 Suspension of action.
(a) Suspension of action by the Office will be granted
for good and sufficient cause and for a reasonable time
specified upon petition by the applicant and, if such cause
is not the fault of the Office, the payment of the fee set
forth in 1.17(i)[(1)]. Action will not be suspended when
a response by the applicant to an Office action is required.
* * * * *
26. A new, undesignated center heading and new section 1.129
are proposed to be added to Subpart B-National Processing
Provisions to read as follows:
>TRANSITIONAL PROVISIONS
1.129 Transitional procedures for limited examination
after final rejection and restriction practice.
(a) An applicant in an application, other than for reissue
or a design patent, that has been pending for at least two
years as of the effective date of 35 U.S.C. 154(a)(2),
taking into account any reference made in such application
to any earlier filed application under 35 U.S.C. 120, 121
and 365(c), is entitled to have a first submission entered
and considered on the merits after final rejection under the
following circumstances: The Office will consider such a
submission, to the extent that it would have been entered
and considered if made prior to final rejection, if the
first submission is filed prior to or simultaneously with
the filing of a notice of appeal and prior to abandonment of
the application and the fee set forth in 1.17(r) is paid
within one month of any written notification from the Office
refusing entry of the first submission and prior to
abandonment of the application. If a subsequent final
rejection is made in the application, applicant is entitled
to have a second submission entered and considered on the
merits after the subsequent final rejection under the
following circumstances: The Office will consider such a
submission, to the extent that it would have been entered
and considered if made prior to final rejection, if the
second submission is filed prior to or simultaneously with
the filing of a notice of appeal of the subsequent final
rejection and prior to abandonment of the application and a
second fee set forth in 1.17(r) is paid within one month
of any written notification from the Office refusing entry
of the second submission and prior to abandonment of the
application. Any submission filed after a final rejection
made in an application subsequent to the fee set forth in
1.17(r) having been twice paid will be treated as set
forth in 1.116. A submission as used in this paragraph
includes, but is not limited to, an information disclosure
statement, an amendment to the written description, claims
or drawings and a new substantive argument or new evidence
in support of patentability.
(b)(1) In an application, other than for reissue or a design
patent, that has been pending for at least three years as of
the effective date of 35 U.S.C. 154(a)(2), taking into
account any reference made in the application to any earlier
filed application under 35 U.S.C. 120, 121 and 365(c), no
requirement for restriction or for the filing of divisional
applications shall be made or maintained in the application
after the effective date, except where:
(i) the requirement was first made in the application
or any earlier filed application under 35 U.S.C. 120, 121
and 365(c) more than two months prior to the effective date;
(ii) the examiner has not issued any Office action in
the application due to actions by the applicant; or
(iii) the required fee for examination of each
additional invention was not paid.
(2)If the application contains more than one independent
and distinct invention and a requirement for restriction or
for the filing of divisional applications cannot be made or
is withdrawn pursuant to this paragraph, applicant will be
so notified and given a time period of one month from the
notice to pay the fee set forth in 1.17(s) for each
independent and distinct invention claimed in the
application in excess of one. If applicant does not pay the
required fee for each additional invention in a timely
manner, only the first claimed invention and those
additional inventions for which the fee has been paid will
be searched and examined. The additional inventions for
which the required fee has not been paid will be withdrawn
from consideration under 1.142(b). An applicant who
desires examination of an invention so withdrawn from
consideration can file a divisional application under
35 U.S.C. 121.
(c) The provisions of this section shall not be applicable
to any application filed on or after the effective date of
35 U.S.C. 154(a)(2).<
27. Section 1.139 is proposed to be added to read as
follows:
> 1.139 Revival of provisional application.
(a) A provisional application which has been accorded a
filing date and abandoned for failure to timely respond to
an Office requirement may be revived so as to be pending for
a period of no longer than twelve months from its filing
date if it is shown to the satisfaction of the Commissioner
that the delay was unavoidable. Under no circumstances will
the provisional application be pending after twelve months
from its filing date. A petition to revive an abandoned
provisional application must be promptly filed after the
applicant is notified of, or otherwise becomes aware of, the
abandonment, and must be accompanied by:
(1) the required response unless it has been
previously filed;
(2) the petition fee as set forth in 1.17(l);
and
(3) a showing that the delay was unavoidable. The
showing must be a verified showing if made by a person not
registered to practice before the Patent and Trademark
Office.
(b) A provisional application which has been accorded a
filing date and abandoned for failure to timely respond to
an Office requirement may be revived so as to be pending for
a period of no longer than twelve months from its filing
date if the delay was unintentional. Under no circumstances
will the provisional application be pending after twelve
months from its filing date. A petition to revive an
abandoned provisional application must be:
(1) accompanied by the required response unless it
has been previously filed;
(2) accompanied by the petition fee as set forth
in 1.17(m);
(3) accompanied by a statement that the delay was
unintentional. The statement must be a verified statement
if made by a person not registered to practice before the
Patent and Trademark Office. The Commissioner may require
additional information where there is a question whether the
delay was unintentional; and
(4) filed either:
(i) within one year of the date on which the
provisional application became abandoned; or
(ii) within three months of the date of the first
decision on a petition to revive under paragraph (a) of this
section which was filed within one year of the date on which
the provisional application became abandoned.
(c) Any request for reconsideration or review of a
decision refusing to revive a provisional application upon
petition filed pursuant to paragraphs (a) or (b) of this
section, to be considered timely, must be filed within two
months of the decision refusing to revive or within such
time as set in the decision.
(d) The time periods set forth in this section cannot
be extended, except that the three-month period set forth in
paragraph (b)(4)(ii) of this section and the time period set
forth in paragraph (c) of this section may be extended under
the provisions of 1.136.<
28. Section 1.177 is proposed to be revised to read as
follows:
1.177 Reissue in divisions.
The Commissioner may, in his or her discretion, cause
several patents to be issued for distinct and separate parts
of the thing patented, upon demand of the applicant, and
upon payment of the required fee for each division. Each
division of a reissue constitutes the subject of a separate
specification descriptive of the part or parts of the
invention claimed in such division; and the drawing may
represent only such part or parts, subject to the provisions
of 1.83 and 1.84. On filing divisional reissue
applications, they shall be referred to the Commissioner.
Unless otherwise ordered by the Commissioner upon petition
and payment of the fee set forth in 1.17(i)[(1)], all the
divisions of a reissue will issue simultaneously; if there
be any controversy as to one division, the others will be
withheld from issue until the controversy is ended, unless
the Commissioner shall otherwise order.
29. Section 1.312 is proposed to be amended by revising
paragraph (b) to read as follows:
1.312 Amendments after allowance.
* * * * *
(b) Any amendment pursuant to paragraph (a) of this
section filed after the date the issue fee is paid must be
accompanied by a petition including the fee set forth in
1.17(i)[(1)] and a
Last Modified: March 1995
Chuco |
