2000 Changes to Application Examination and Provisional Application Practice

The U.S. Patent and Trademark Office revised the rules of practice to implement certain provisions of the American Inventors Protection Act of 1999. Please see the previous AIPA post. This rule change package had an effective date of May 29, 2000. The rule changes extended the pendency of a provisional application if the date that is 12 months after the filing date of the provisional application falls on a Saturday, Sunday, or Federal Holiday within the District of Columbia. There had previously been a trap with provisionals--if the 12 months after filing fell on a holiday, it was not possible to file the nonprovisional on the next business day and obtain the benefit of the filing date of the provisional. These rule changes also provided for conversion of a provisional application into a nonprovisional application, and provided a prior art exclusion for certain commonly assigned prior art.

Details can be found at:
http://www.patentsusa.com/20000529_changes.pdf

37 C.F.R. Section 1.17 was amended to add a new paragraph (b) that provided that if the day that is twelve months after the filing date of a provisional application falls on a Saturday, Sunday, or Federal holiday within the District of Columbia, the period of pendency would be extended to the next succeeding secular or business day which is not a Saturday, Sunday, or Federal Holiday.

Section 1.17(c) set forth the fee for a request for continued examination. 1.17 was also amended to include a reference to a fee to convert a provisional application to a non-provisional.

Section 1.53 was amended to redesignate paragraph (3) as paragraph (4) and to add a new paragraph (3) to provide for the conversion of a provisional application to a nonprovisional application. Such a conversion requires a fee and an amendment including at least one claim unless the provisional included a claim.

Section 1.53(d) was amended to describe phase-out of CPAs. The continued prosecution application practice would not apply to applications (other than design applications) if the prior application had a filing date on or after May 29, 2000.

Section 1.78 was amended to require that for a nonprovisional to claim the benefit of a provisional application, the provisional application had to be entitled to a filing date and the filing fee had to have been paid. Translations also would have had to be filed.

Section 1.97(b) was amended to indicate that an information disclosure statement would be considered if filed before the mailing of a first Office Action after filing of an RCE.

Section 1.114 was added to describe the RCE procedure.

Additional changes were also made.