Saturday, March 3, 2007

1997 Changes to Patent Practice and Procedure, CPAs, Inventorship, Appeals, Reissues

This was a major rule change package that was not adopted in response to any change in the patent statutes.

Details can be found here:

and a correction can be found here:

This rule change package makes significant changes such as introducing Continued Prosecution Applications. A Continued Prosecution Application was much like a file wrapper prosecution application--prosecution of a patent application could be continued by paying an additional fee. No new specification was needed. A CPA could name the same or fewer inventors listed in the prior application. A reference to the prior application was not to be added to the first line of the application.

Three previous rules relating to different types of new filings were consolidated into one rule, 37 C.F.R. Section 1.53. Prior rules 60 and 62 were deleted. The stated benefit was that applicants would not need detailed knowledge of the rules--when in doubt, or if in a hurry, applicants could file under 1.53 and the office would process the application based on actual papers submitted. (More recently, the office has been requiring applicants to have a detailed understanding of hyper-technical rules.) Former rule 1.60 required "a true copy of prior application as filed" which was difficult to meet years later because of extraneous markings and pagination problems. New 37 C.F.R. 1.53 did not require a true copy. Filing of a continuation or divisional using a copy of the Oath or Declaration from the prior application was still permitted. A clean divisional or continuation application could be generated by computer as long as no new matter was added, and it was recommended that such applications contain a sentence incorporating the prior application by reference to guard against filing a specification that was missing a page.

Another big change was that the naming of actual inventors was dropped as a requirement for obtaining a filing date.

Another big change was a reduction in several requirements for reissue applications. 37 C.F.R. Section 1.175 was amended to require the identification of only one error as the basis for reissue, instead of the prior requirement to particularly and distinctly specify all errors being corrected.

1.175 was also amended to require only a general statement that errors arose without deceptive intent, instead of the prior requirement for a detailed showing of facts and circumstances as to how each error arose or occurred.

1.175 was also amended to require submission of a supplemental Oath or Declaration prior to allowance generally stating that all errors being corrected which were not covered by the original or a previously submitted Oath or Declaration arose without deceptive intent. This was instead of the previous requirement for supplying a supplemental Oath or Declaration specifically identifying all subsequent errors being corrected every time an amendment was submitted.

37 C.F.R. Section 1.63 was revised to require that the post office address of inventors appear in the Oath or Declaration rather than elsewhere. And the requirement that the Oath or Declaration contain the full names of the inventors was transferred to 1.63 from 1.41(a).

The rule changes eliminated the requirement that statements of facts by non-practitioners be verified. In the past, if a practitioner submitted a statement of facts, they were not required to be verified but submissions by non-practitioners had to be verified.

Additional big changes related to simplification of the procedure for correction of inventorship. 37 C.F.R. Section 1.48 (a) was revised to delete the diligence requirement. The former requirement for a factual showing as to lack of deceptive intent in 1.48(a) was deleted in favor of a general statement as to lack of deceptive intent. 1.48(a) was also revised such that a verified statement was no longer required from each original named inventor. The new requirement was only for a non-verified statement from each inventor being added or deleted.

1.48(b), for correction of inventorship due to a change in claims affecting inventorship, was revised to delete the diligence requirement.

1.48(c), for correction of inventorship due to addition of subject matter to claims, was revised to only require a non-verified statement from each inventor being added, recognizing that the correction was being made in view of the claim amendment, and stating that the error occurred without deceptive intent on the person being added.

37 C.F.R. Section 1.324, for correction of inventorship in an issued patent, was revised to replace the previous "satisfactory proof of facts" standard with specific requirements similar to those in revised 1.48(c). The diligence requirement was deleted. Only a general statement of lack of deceptive intent was required, instead of the previous practice of requiring factual showings of lack of deceptive intent. A non-verified statement from each inventor being added or deleted replaced the previous requirement for a verified statement for each original inventor. The new version of 1.324 also required a non-verified statement from the current inventors agreeing to the change or stating no disagreement with the requested changed. A new Oath or Declaration was no longer required.

Another big change was that 37 C.F.R. 1.137(b), relating to petitions to revive abandoned patent applications for unintentional delay, was revised to delete the one year deadline. The entire period of delay must have been unintentional.

37 C.F.R. Section 1.137(a)(3) was revised to clarify that the time period for petitions to revive for unavoidable delay is from the due date of the reply that was not submitted to the date of filing of a grantable petition.

37 C.F.R. Section 1.28(a) provided that a new small entity statement was no longer required for a continuing application (including a CPA) or reissue. It also provided that payment of the small entity filing fee in a continuing application or in a reissue application would substitute for the reference to the small entity statement in the prior application. It also clarified that the filing of a continuing application requires a new determination by applicant of entitlement to status. It also was amended to provide that an explanation of erroneous payment of a small entity fee was no longer required--payment of a fee deficiency was per se deeded to be a representation that an erroneous prior small entity status request was in good faith.

37 C.F.R. Section 3.73(b) was revised to delete the requirements that an assignee specifically state that evidentiary documents were reviewed, and to certify that the title was in the assignee seeking to take action. It was also amended to provide for partial assignees to submit evidence of ownership.

Appeal practice was changed to place limitations on new grounds of rejection and to increase the admissibility of reply briefs. The former requirement that a Notice of Appeal identify the rejected claim or claims appealed and that the appeal be signed were deleted.

37 C.F.R. Section 1.193(a)(2) prohibited the inclusion of new grounds of rejection in an Examiner's Answer unless an Amendment under 1.116 was approved for entry for appeal purposes. Instead, an Examiner would be required to reopen prosecution to add a new ground of rejection. (An unfortunate consequence of this well-intended rule change is that some Examiners recently seem to have adopted a strategy of repeatedly re-opening prosecution to delay or prevent a case from going to appeal.)

37 C.F.R. Section 1.193(b)(1) was revised to provide appellants with a right to file a reply brief whether or not the Examiner's Answer raised new points of argument.

37 C.F.R. Section 1.196(b) provided authority for the Board of Appeals to reject any pending claim, even if previously allowed an not appealed, in place of the former requirement for a binding recommendation to the Examiner.

37 C.F.R. Section 1.137(c) was revised to expand terminal disclaimer requirements to petitions for unintentional delay, instead of just unavoidable delay, such that a terminal disclaimer would be required for all design applications, as well as for all plant and utility applications that were filed prior to June 8, 1995. The former six month grace period before a terminal disclaimer was required was eliminated.

37 C.F.R. Section 1.136 was revised to provide for up to five months of extensions, subject to any statutory maximums, up from the previous limit of four months.

Significantly, 1.136(a) permitted a general authorization to treat future replies requiring extensions of time as automatically incorporating a request for extension of time. 1.136(a) was also revised to treat a general authorization to charge fees to a deposit account as a constructive petition for extension of time wherever one was needed concurrently or in the future.

The one month time period for correcting incomplete but bone fide responses was eliminated. The new 1.135(c) provided that the reply may be accepted, and an action setting forth a requirement and giving a new period for reply would be mailed. This permitted extensions of time.

37 C.F.R. 1.291(c) eliminated the blanket limitation of one protest per protester, and allowed for entry of additional prior art submissions.

Some other changes were also made.