Manualof
`
`
`Original Sixth Edition, January 1995
`Latest Revision July 1996
`
`
`
`U.S. DEPARTMENT OF COMMERCE
`Patent and Trademark Office
`
`Rev, 2, July 1996
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`Page 1 of 23
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`
`dent ofDocuments atthe follovingaddress:
` ~. SuperintendentofDocuments|a.
`
`Mail List Section: ee
`_ Washington,D.c,20402
`InquiriesrelatingtopurchasingtheManualshouldbee directedto:
`
`Superintendent ofDocuments.
`we
`United States Government Printing Offiice
`
`
`Washington, D.C. 20402
`OrdersforreproducedcopiesofindividualreplacementpagesorofpreviousrevisionsoftheManualshouldbe:senttothe a =
`
`
`following address:
`
`Commissioner of Patents and Trademarks
`Attention: Certification Branch
`
`7
`
`,
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`
`
`
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`Washington, D.C. 20231
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`Previous editions and revisions of the Manual are available on microfilm in the Public Search Room.
`
`-
`
`The Manualis available on CO-—ROM and ondiskette from:
`US. Patent and Trademark Office
`Office of Electronic Information Products and Services
`
`Telephone: (70393080322
`,
`
`Washington, D.C. 20231
`
`Employees of the Patent and Trademark Office should direct their requests for the Manual, replacement pages,notices,
`andrevisions to the Patent Academy.
`
`Additions to the textofthe Manualare indicated byarrows (><) insertedin the text. Deletionsare indicated by a single asterisk (*) where a
`single word was deleted and by two asterisks (**) where more than oneword was deleted. The use ofthree orfive asterisks in the body of the laws
`and rules indicates a portion of the law or rule which was not reproduced.
`
`First Edition, November 1949
`
`Second Edition, November 1953
`
`Third Edition, November 1961
`Fourth Edition, June 1979
`Fifth Edition, August 1983
`Sixth Edition, January 1995
`Revision 1, September 1995
`Revision 2, July 1996
`
`Rev. Z, July 1996
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`This Manualis published to provide Patent and Trademark Office patent'ex-
`aminecrs, applicants, attorneys, agents, and representativesof-applicants with ¢a:
`reference work on the practices and pracedurcs relativeto the prosccu ion of pat-
`ent applications before the Patent and. TrademarkOffice...
`It contains instructions
`
`to examiners, as well as other material in the nature of information and.interpre-
`tation, and outlines the current procedures which the examiners are requiredor
`—
`authorized to follow in appropriate cases in the normal cxamination of.a patent
`application. The Manual docs not have the force of law or the foree of the Patent : oe
`Rulcs of Practicein Title 37, Code of Fedcral Regulations.
`oo
`A separate manual entitled “Trademark Manual of Examining Procedure” is.
`published by the Patent and Trademark Office as a reference work for trademark .
`cases.
`Examiners will be governed by the applicable statues, the Rules of Practice,
`decisions, and orders and instructions issued by the Commissioner and the Assis
`tant Commissioners. Orders and Noticesstill in force which relate to the subject
`matter included in this Manual are incorporated in the text. Orders and Notices,
`or portions thereof, relating to the examiners’ duties and functions which have
`been omitted or not incorporated in the text may be considered obsolete.
`Inter-
`ference procedure not directly involving the Primary Examiner are not included
`in this Manual and, therefore, Orders and Notices relating thereto remain in
`force.
`
`
`
`
`
`
`
`
`
`
`
`Subsequent changes in practice and other revisions will be incorporated in
`the form of substitute or additional pages for the Manual.
`Suggestions for improving the form and content of the Manual are always
`welcome. They should be addressed to:
`
`Commissioner of Patents and Trademarks
`Editor, MPEP
`Washington, D.C. 20231
`
`
`
`
`
`
`
`
`
`
`
`
`For sale by the U.S, Government Printing Office, Superintendent of Documents, Mait Stop: SSOP, Washington, DC z0die.utax
`
`
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`
`Introduction 0.0.00... ccc cee cece eect eee tn nee enenne eee cae es ace eee eee 1
`100
`Secrecy, Access, National Security, and Foreign Filing ...............00-0.. 100-1
`200
`‘Types, Cross--Noting, and Status of Application .......... 0.0.0... eee eee .. 200-1
`300 Ownership and Assignment ......... 00... cece eee e eee cee cee ee ne eenenee 300-1
`400 Representative of Inventor or Owner. ........ 0. cece eee eect ne 400-1
`500 Receipt and Handling of Mail and Papers .......... ccc cece cece eee eee 500-1
`600
`Parts, Form, and Content of Application ........0 0... ccc cece cece ee eee eee 600—-1
`700
`Examination of Applications ........ 0... cee eee cece een eee nens 700~1
`800 Restriction in Applications Filed Under 35 U.S.C. 111; Double Patenting ..... 800-1
`900
`Prior Art, Classification, Search .... 0.0... ccc ccc cee ete ener eee neeeees 900-1
`1000 Matters Decided by Various Patent and Trademark Office Officials ......... 1000-1
`1100 Statutory Invention Registration (SIR) .... 0.0... cece eee er eens 1100~—1
`AG 5)=| 1200-1
`1300 Allowance and Issue .. 0.0... cece tence eee e een enas 1300-1
`
`1400 Correction of Patents 2.0.0... c eee e eee een ene teneeenees 1400-1
`1500 Design Patents 0.0.0.0... cece eee ence teeter nent eee neeeenes 1500—1
`1600 Plant Patents 0.0.0.0... ieee cece cece eee e een een e eee eee eenee 1600-1
`
`1700 Miscellaneous 2.0... 0c cece cece cece eer bene eee nee eennes 1700-1
`1800 Patent Cooperation Treaty ..... 0... ccc cece eee eee cece tenn ee eneee 1800-1
`1900 Protest 00... cic ce ccc eee eee ee eee eee ened e ee nee eee ene e ene ee 1900-1
`2000 Duty of Disclosure 0.0... icc cece cee erent teen eect aeenee 2000-1
`2100 Patentability ...... 00. ccc cc ete center tenet tee enenneees 2100-1
`2200 Citation of Prior Art and Reexamination of Patents....................0.. 2200-1
`2300 Interference Proceedings Under Public Law 98-622 .................005- 2300-1
`2400 Biotechnology ........ 0... cect ete ete eee een e eterno nannies 2400-1
`2500 Maintenance Fees ...... 0... cece ener ent e nent eee eeens 2500-1
`
`
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`Chapter
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`Page
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`Partial List of Trademarks ....... 00.0 ccc ccc e ce eee eee ree enneees A-l
`Appendix!
`Appendix I] List of Decisions Cited 0.0... ccc cece reece nce ence een eeenevenas Aw5
`
`Appendix L Patent Laws .... ccc ccc cece erence eee tee nee teen tneesnens L~1
`
`Appendix R Patent Rules oo... cece cece rene tenner ene etn nn enneenns R-1
`
`Appendix T Patent Cooperation Treaty ... 0.0... cece eee cece enero nn eaenes T-1
`
`
`Appendix Al PCT Administrative Instructions Under the PCT ..........-... eee AI~1
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`
` Appendix P Paris Convention for the Protection of Industrial Property ............. P-1
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`THOM oo oc ccc cece cece cece eee eee beeen neue beste ensteeneusetaeetscesees I-1
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`(v)
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` Constitutional Basis ,
`
`Statutes
`
`
`
`
`
`
`Rules of Practice
`
`Oneof the sections of the patent statute, namely, 35
`U.S.C. 6, authorizes the Commissioner of Patents and
`Trademarks, subject to the approval of the Secretary of
`Commerce, to establish regulations, not inconsistent with
`law, for the conduct of proceedingsin the Patent and Trade-
`mark Office.
`
`37 CFR 1351. Amendments to nies will be published.
`Allamendsmentsin this part will be published in the Official Gazette and
`in the Federal Register
`
`Commissioners Orders and Notices
`
`From time to time, the Commissioner of Patents and
`Trademarks has issued Orders and Notices relating to vari-
`ous specific situations that have arisen in operating the Pat-
`ent and Trademark Office. Notices and circulars of informa-
`tion or instructions have also been issued by other Office Of-
`ficials under authority of the Commissioner. Orders and
`Notices have served various purposes including directions
`to the examiners giving them instruction, information, in-
`terpretations, and the like. Some may be for the information
`of the public, advising what the Office will do under speci-
`fied circumstances.
`
`Decisions
`
`Pursuant to the provision of the Constitution, Congress
`has over the years passed a numberofstatutes under which
`the Patent and Trademark Office is organized and our pat-
`ent system is established. The provisionsof the statutes can
`in no way be changed or waived by the Patent and Trade-
`mark Office.
`Prior to January 1, 1953, the law relating to patents con-
`sisted of various sections of the Revised Statutes of 1874, de-
`rived from the Patent Act of 1870 and numerous amendato-
`ry and additional acts.
`By an Act of Congress approved July 19, 1952, which
`cameinto effect on January 1, 1953, the patent laws were re-
`vised and codified into substantially its present form. The
`patentlaw is Title 35 of the United States Code which gov-
`ersail cases in the Patent and Trademark Office. In refer-
`ring to a particular section of the patent codethecitationis
`given, for example,as, 35 U.S.C. 31.
`35 U.S.C. 1. Establishment.
`The Patent and Trademark Office shall continue an office in the
`Department of Commerce, where records, books, drawings, specifications,
`and other papers and things pertaining to patents and to trademark
`registrations shali be kept and preserved, except as otherwise provided by
`law.
`
`
`modifiediin the lightthereat
`:
`me
`(b) Oralhearings.maybe held atthe discretion’of the Commissioner. “
`
`
`The Constitution of the United States provides:
`These.regulations¢orrules and amendments théreto are
`
`“Art. 1, Sec. 8. The Congress shall have power;.. To pro-
`
`publishediin the Federal Register and in the Official Ga-
`mote the progressof science and usefularts, by securing for ©
`
`
`zette.
`In the Federal Register: and-inthe Code of Federal”
`
`limited times to authors and inventors the exclusive right to
`
`
`Regulations these’rules are Part 1 of Title 37, Patents, Trade-
`their respective writings and discoveries.”
`
`
`marks, and Copyrights, and theindividual rulés, called sec-
`
`
`
`tions, are numbered with the Part number and a decimal
`
`
`point prefixed to the rule number. Abookletentitled “37 :
`Code of Federal Regulations,” published bythe Office of
`the Federal Register, contains all of the patent-rules as well '
`
`as trademark rules and copyright rules. Persons desiring a."
`
`copy of the patent rules should order a complete copy of
`
`“Title 37, Code of Federal Regulations” from the Superin-
`
`tendent of Documents.
`
`
`The primary function of the Rules of Practice is to ad-
`vise the public of the regulations which have been estab-
`
`lished in accordancewith the statutes and which mustbe fol-
`
`lowed before the Office. The Rules of Practice govern the
`examiners, as well as applicants and their attorneys. The
`
`Rulesof Practice appear in the Manual of Patent Examining
`
`Procedure as Appendix R.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`In addition to the statutory regulations, the actions tak-
`en by the examiner in the cxamination of applications for
`patents are to a great extent governed by decisions on prior
`cases. Applicants dissatisfied with an examiner’s action may
`have it reviewed. In general, that portion of the examiner’s
`action pertaining to objections on formal matters may be re-
`viewed by petition to tie Commissioner of Patents and
`Trademarks (see MPEP § 1002) and thatportion of the ex-
`aminer’s action pertaining to the rejection of claims on the
`merits, may be reviewed by appeal to the Board of Patent
`Appeals and Interferences (see § 1201). The distinction is
`set forth in 37 CFR 1.181 and 1.191. In citing decisions as
`
`35 CFR 1.352. Publication of notice ofproposed amendments,
`(a) Wheneverrequired by law, and in othercaseswhenever practicable,
`notice of proposed amendmentsin this part will be published in the Official
`
`Gazene andin the Federal Register. Ifnot published with the notice, copies of
`the text will be furnished to any person requesting the same. All comments,
`
`suggestions, and briefs received within a time specifiedin the notice will be
`
`
`
`
`
`
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`=
`
`Ordersshouldbeaddressedandremittancesmadepayabletoo Superin: o
`tendentof‘Documents,U.8.GovernmentPrintingOffice,Washington,B.C.
`
`20402.
`
`PatentOfficialGazette, theofficialjournalofthePatentandTrademack ~
`
`Office relating to patents. Issued.cach ‘Tuesday, simultaneously with:the a
`entand Tra jemark Office.
`:
`eae
`
`Title37—CodeofFederalRegulations Compitation herulesofprac- os
`weekly issuance ofpatenits, itcontainsa selected figure of the drawingsanda_
`
`claim of cach patentgranted,indexes ofpatents, fist of patents available for
`
`tice of the U.S,Patent and Trademark Office.
`license orsale, and generalinformation such as orders, notices,changes in
`
`PublicationsAvailableFrom the .
`rules, and changesinclassification. :
`
`Patent and Trademark Office
`
`AnnualIndexes. Anindexofthe patents issued cach yearis published in
`twovolumes, one an alphabetical indexofpatentees and the other an index by
`_ OrdersshouldbeaddressedtoPatentandTrademarkOffice,Washing:
`
`subject matter of inventions. The two parts are sold separately. Price varies
`ton, D.C. 20231. Remittances shouldbe made payable to Commissioner of.
`fromyearto year, depending uponsize of the publication. An annual index of
`/ Patents and Trademarks. Postage stamps, Superintendent of Documents
`Trademarks contains an alphabetical index of trademark registrants, regis-
`
`couponsorotherGovernmentcouponsare notacceptubleiinpaymentofPat-
`
`tration numbers, dates published, classification of goods for which regis-
`ent and Trademark Office fees.
`tered, and decisions published during the calendar year. Price varies from
`Q&AAboutFatents, Briefnontechnicalanswerstaquestionsmost fre-~
`
`yearto year, depending upon sizc of the publication.
`GuideforPatentDraftsmen. Patent and TrademarkOffice requirements
`quently asked about Patents.
`Q & A About Plant Patents. Same as above for plant patents.
`for Patent drawings with illustrations.
`
`ManualofClassification. A \ooscleaf volumelisting the numbers and
`
`Patents. Copiesofthe specification and drawings ofall patents are avail-
`descriptive titics of the more than 300 classes and 95,000 subclasses used in
`able at one doilar andfifty centseach. Whenordering,identify the patent by
`
`
`the subjectclassification of patents, with an index to the classifications, Sub-
`the patent number,or give full name ofthe inventor and approximatedate of
`stitute and additional pages, which are included in the subscription service,
`issuance of the patent.
`Classification Definitions, Contain the changesiin classification ofpat-
`are issued from time to time.
`
`entsas well as definitions of new andrevised classes and subclasses. Price is
`based uponsize of publication.
`:
`Weekly Class Sheets. Lists showing classification of cach patentin the
`weekly issue of the Parent Official Gazette.
`:
`
`General Information Conceming Patents. Contains a vast amount of
`generalinformation concerning the application for and granting of patents,
`expressed in nontechnical languagefor the layman. Multiple copies available
`from Superintendeat of Documents.
`
`
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`601.
`
`601.01(b)
`
`Content ofProvisional and Nonprovisional 2
`Applications
`Complete Application
`601.01
`>601.01(a) Nonprovisional Applications Filed Under
`35 U.S.C. 111(a)
`Provisional Applications Filed Under
`35 U.S.C. 111(b)
`601.01(c) Conversion to a Provisional Application
`601.01(d) Application Filed Without All Pages
`of Specification
`601.01(e) Nonprovisional Application Filed Without
`at Least One Claim
`
`
`| Chapter600Parts,Form,andContentofAp
`605;o4(e)
`“Corree jon of.Inventors ipo.
`
`
`Administrator, Executor,orOtherLegal
`
`
`605.05.
`
`605.07
`- 606
`606.01
`607
`607.02
`608
`608.01
`
`Representative °°
`Icint Inventors
`Title of Invention
`Examiner May Require Changeiin Title
`
`Filing Fee
`Returnability of Fees
`Disclosure —
`
`601.01(f) Applications Filed Without Drawings
`601.01(g) Applications Filed Without Ail Figures
`of Drawings
`601.01(h) Forms<
`601.02
`Powerof Attorney or Authorization of Agent
`601.03
`Change of Correspondence Address
`601.04
`NationalStage Requirementsofthe United Statesas
`a Designated Office
`Original Oath or Declaration
`602
`Gath Cannot Be Amended
`602.01
`New Oath or Substitute for Original
`602.02
`Defective Oath or Declaration
`602.03
`Foreign Executed Oath
`602.04
`602.04(a) Foreign Executed Oath Is Ribboned to Other
`Application Papers
`Oath or Declaration -—- Date of Execution
`602.05
`602.05(a) Oath or Declaration in Division and Continuation
`Cases
`Non-English Oath or Declaration
`Oath or Declaration Filed in United States as a
`Designated Office
`Supplemental Oath or Declaration
`Supplemental Oath or Declaration Filed After
`Allowance
`Administration or Execution of Oath
`Seal
`Venue
`
`603
`603.01
`
`604
`604.01
`604.02
`ane
`
`602.06
`602.07
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`604,03(a) Notarial Powers of Some Military Officers
`604.04
`Consul
`Additional, Duplicate, or Substitute Drawings
`
`604.04(a) Consul ~ Omission of Certificate
`Transfer of Drawings From Prior Applications
`
`604.06
`By Attorney in Case
`Drawing Prints
`Duplicate Prints in Patentability Report Cases
`605
`Applicant
`
`605.01
`Applicant’s Citizenship
`Dates Entered on Drawing
`
`605.02
`Applicant’s Residence
`Correction of Drawings
`
`605.03
`Applicant's Post Office Address
`Conditions Precedent to Amendment of Drawing
`
`Separate Letter to Draftsman
`605.04(a) Applicant’s Signature and Name
`605.04(b) One Full Given Name Required
`Cancellation of Figures
`
`Inventor Changes Name
`Drawing Changes Which Require Sketches
`605.04(c)
`
`
`Applicant Unable to Write
`Drawing Changes Which May Be Made Without
`605.04(d)
`
`
`May Use Title With Signature
`Applicant’s Sketch
`605.04(e)
`
`
`Signature on Joint Applications — Order of Names
`Disposition of Orders for Amendment of Drawing
`
`605,04(£) 608.02(x)
`
`
`
`
`
`
`Rev, 2, July 1996
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Specification
`Arrangement ofApplication
`
`Abstract of the Disclesure -
`Backgroundof the Invention
`Brief Summary of Invention
`Reservation Clauses Not Permitted
`Brief Description of Drawings
`Detailed Description of Invention
`Modeof Operation of Invention
`Claims
`Numbering of Claims
`Statutory Requirement of Claims
`Original Claims
`Form of Claims
`
`Dependent Claims
`Basis for Claim Terminology in Description
`Completeness
`Substitute or Rewritten Specification
`Derogatory Remarks AboutPrior Art in
`Specification
`Restoration of Cancelled Matter
`Use in Subsequent Application
`Use of Formerly Filed Incomplete Application
`Trademarks and Names Used in Trade
`Drawing
`New Drawing —When Required
`Informal Drawings
`Drawing Print Kept in File Wrapper
`Complete Mlustration in Drawings
`Examiner Determines Completeness of Drawings
`Modifications in Drawings
`illustration of Prior Art
`
`608.01(a)
`608.01(b)
`608.01(c)
`608.01(d)
`608.01(e)
`608,01(f)
`608.01(g)
`608.01(h)
`608.01(i)
`608.01(j)
`608.01(k)
`608.01(1)
`608.01(m)
`608.01(n)
`608.01(0)
`608.01(p)
`608.01(q)
`608.01(r)
`
`608.01(s)
`608.01(t)
`608.01(u)
`608.01(v)
`608.02
`
`608.02(a)
`608.02(b)
`608.02(c)
`608.02(d)
`608.02(e)
`608.02(£)
`608.02(g)
`608.02(h)
`608.02(i)
`608.02(m)
`608.02(n)
`608.02(0)
`608,02(p)
`608.02(q)
`608.02(r)
`608.02(t)
`608.02(v)
`608.02(w)
`
`
`
`
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`1.77;
`
`(ii) An oath or declaration, see §§ 1.63 and 1.68;
`ii) Drawings, when necessary, see §§ 1.81 to 1.85; and
`(iv) The prescribedfiling fee, sce § 1.16.
`(2) A complete provisional application filed under § 1.53(b)(2)
`comprises:
`(i) Acoversheetidentifying:
`(A) Theapplication as a provisional application,
`(B) The nameor namesofthe inventoror inventors, (sce § 1.41),
`(C) The residence of each namedinventor,
`(D) Thetitle of the invention,
`(£) The nameandregistration numberofthe attomeyoragent(if
`applicable),
`(F) The docket numberusedbythe personfiling the application
`to identify the application(if applicable),
`(G) The correspondence address, and
`(2) The nameofthe U.S. Government agency and Government
`contract number(if the invention was made by an agency of the U.S.
`Government or under a contract with an agency of the U.S. Govern-
`ment);
`(ii) A specification as prescribed by 35 U.S.C, 112, first para-
`graph, see § 1,71;
`(iit) Drawings, when necessary, sce §§ 1.81 to 1.85; and
`(iv) The prescribedfiling fee, see § 1.16.
`(b) Applicants are encouragedtofile an information disclosure
`statement in nonprovisional applications. See §§ 1.97 and 1.98. No
`information disclosure statement may be filed in a provisional applica-
`tion.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`35 USC, 111 Application
`
`(a) IN GENERAL—
`
`(1) WRITTEN APPLICATION.—Anapplication for patent
`
`shall be made, or authorized to be made, by the inventor, except as
`
`otherwise provided in this title, in writing to the Commissioner.
`
`(2) CONTENTS.—Such application shall include—
`
`(A)—_aspecification as prescribed by section 112 ofthistitle;
`37 CFR 1.51. Generalrequisites ofan application.
`
`
`(B)—_a drawing as prescribed by section 113 ofthis title; and (a) Applications for patents must be made to the Commissioner
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`of Patents and ‘Trademarks.
`(C)
`an oath by the applicantas prescribed by section 115 of
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`thistitle.
`(1) Acomplete application filed under § 1.53(b)(1) comprises:
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`(3) FEE AND OATH.—Theapplication must be accompanied
`(i) A specification, including a claim or claims, see 8§ 1.71 to
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`by the fee required by law. The fee and oath may be submitted after the
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`specification andanyrequired drawing are submitted,within such period
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`and under such conditions, including the paymentof a surcharge, as may
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`be prescribed by the Commissioner.
`(4) FAILURE TO SUBMIT-—Uponfailure to submit the fee
`andoath within such prescribedperiod,the application shall be regarded
`as abandoned,untessit is shown to the satisfaction of the Commissioner
`that the delay in submitting the fee and oath was unavoidable or
`unintentional. Thefilingdateofan application shall be the date onwhich
`the specification and anyrequired drawing are received in the Patent and
`Trademark Office.
`(b) PROVISIONAL APPLICATION.—
`(1) AUTHORIZATION.—Aprovisionalapplication for patent
`shalf be made or authorized to be made by the inventor, except as
`otherwise providedin thistitle, in writing to the Commissioner. Such
`application shall inclede—
`(A)
`a specification as prescribed by the first paragraph of
`section 112 ofthis title; and
`a drawing as prescribed by section 113 ofthistitle.
`(B)
`(2) CLAIM.-~-A claim, as required by the second through fifth
`paragraphs of section 112, shall not be required in a provisional
`application.
`(3) FEE.—(A) The application must be accompanied by the fee
`required by law.
`(B)
`The fee maybe submitted after the specification and any
`required drawing are submitted, within such period and
`under such conditions, including the payment of a
`surcharge, as may be prescribed by the Commissioner.
`(C)
`Upon failure to submit the fee within such prescribed
`(c) Applicants maydesire andare permittedto filewith,or in, the
`period, the application shall be regarded as abandoned,
`application or authorization to chasge,at any time during the pendency
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`601
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`608.02(y) Return of Drawing
`608.02(z) Allowable Applications Needing Drawing
`"Corrections or Formal Drawings:
`Models, Exhibits, Specimens
`608.03
`608.03(2) Handling of Models, Exhibits, and Specimens
`608.04
`New Matter
`608.04(a) Matter Not in Original Specification, Claims, or
`Drawings
`608.04(b) New Matter by Preliminary Amendment
`608.04(c) Review of Examiner’s Holding of New Matter
`608.05
`Deposit of Computer Program Listings
`609
`Information Disclosare Statement
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`601 Content of Provisional and
`Nonprovisional Applications [R~2]
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`MANUAL OFPATENTEXAMININGPROCEDURE
`unlessitisshowntothesatisfactionoftheGoaitntaston :
`er that the delayiinsubmitting the feewasunavoidable
`or unintentional.
`(4) FILING DATE.—Thefiling ¢date of a provisional applica.
`tion shall be the date on whichthe specifiication.and any requireddraw-
`ing are received in the Patent. and ‘Trademark Office.
`|
`(5) ABANDONMENT—The provisional application shali be
`regarded as abandoned -12. months after the:filing ‘date. of such ..
`application and shall not be subject to revival thereafter.
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`(6) OTHER BASIS FOR PROVISIONALAPPLICATION.—
`Subjectto all the conditionsin this subsection and section 119(e) of this
`title, and as prescribed by the Commissioner, an applicationfor patent
`filed under subsection (a) maybe treated asa provisional application for
`patent.
`(7) NORIGHTOFPRIORITYORBENEFITOFEARLIEST
`FILING DATE.—Aprovisionalapplication shall not be entitled to the
`right of priority of any other application under section 119 or 365(a)of
`this title or to the benefit of an earlier filing date in the United States
`undersection 120, 121, or 365(c) ofthistitle.
`(8) * >APPLICABLE< PROVISIONS.—Theprovisions of
`this title relating to applications for patent shall apply to provi-
`sional applications for patent, except as otherwise provided, and ex-
`cept
`that provisional applications for patent shall not be subject
`to sections 115, 131, 135, and 157 ofthistitle.
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`600 — 2
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`PARTS, FORM, AND CONTENT OF APPLICATION
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`oath or declaraticnfiled therewith. Once an oath ar dec-
`laration is submitted in an application filed under
`37 CFR 1.53 identifying the papers which the inventor(s)
`has “reviewed and understands”as required by 37 CFR
`1.63, the original:disclosure of the application is defined
`and cannot be altered merely by filing of a subsequent
`oath or declaration referring to different papers. If the
`applicationis filed without an executed oath or deciara-
`tion pursuant to 37 CFR 1.53(b), the original oath or
`declaration submitted later than the filing date must re-
`fer to the preliminary amendmentfiled along with the
`application in order to comply with 37 CFR 1.63.
`An amendment which adds additional disclosure
`filed with a request for a continuation~in— part applica-
`tion under 37 CFR 1.62 is automatically considered a
`partof the original disclosure of the application by virtue
`of the rule. Therefore, the oath or declaration filed in
`such an application mustidentify the amendment adding
`additional disclosure as one of the papers which thein-
`ventor(s) has “reviewed and understands” in order to
`comply with 37 CFR 1.63. If the original oath or declara-
`tion submitted in a continuation—in—part application
`filed under 37 CFR 1.62 does not contain a reference to
`the amendmentfiled with the request for an application
`under 37 CFR 1.62, the examiner must require a supple-
`mental oath or declaration referring to the amendment.
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`608.04(c) Review of Examiner’s Holding of
`New Matter
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`Where the new matteris confined to amendments to
`the specification, review of the examiner’s requirement
`for cancelation is by way of petition. But where theal-
`leged new matteris introduced into oraffects the claims,
`thus necessitating their rejection on this ground, the
`question becomes an appealable one, and should not be
`considered on petition even though that new matter has
`been introduced into the specification also. 37 CFR
`1,181 and 1.191 afford the explanation of this seemingly
`inconsistent practice as affecting new matter in the spec-
`ification.
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`608.65 Deposit of Computer Program Listings
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`608.05
`listing may be either in machine or machine—independent (object or
`source) language which will cause a computer to’perform a desired
`_ procedure ortask such as solve a problem,regulate the flowofwork ina
`computer,or control or monitor events. Computer program listings may.
`be submitted in patent applications in the following forms:
`(a) Material which will be printed in the patent. If the computer
`programlisting is contained on 10 printout pages:orless, it must be
`submitted either as drawings or as part of the specification.
`{i). Drawings. Thelisting may be submitted in the manner and
`complying with the requirements for drawings as provided in § 1.84. At
`least one figure numeral is required on each sheet of drawing.
`(2) Specification.(i) Thelisting may be submitted as part of the
`specification in accordancewith the provisionsof§ 1.52, at the end ofthe
`description but before the claims.
`(ii) Thelisting may be submitted as part of the specification in
`the form ofcomputer printout sheets (commonly 14 by 11 inches in size)
`for use as camera readycopywhena patent issubsequently printed. Such
`computer printout sheets must be original copies from the computer
`with dark solid black letters not less than 0.21 cm high, on white,
`unshaded andunlined paper, the printing on each sheet must be limited
`to an area 9 inches high by 13 inches wide, and the sheets should be
`submitted in a protective cover. When printed in patents, such
`computer printout sheets will appear at the end of the description but
`before the claims and will usuaily be reduced about1/2 in size with two
`printout sheets being printed as one patent specification page. Any
`amendments must be made by way of submission ofa substitute sheetif
`the copy is to be used for camera ready copy.
`(b) Asan appendix which willnot beprinted. Ifa computer program
`listing printout is 11 or more pageslong, applicants may submit such
`listing in the form of microfiche, referred to in the specification (see
`§ 1.77(c)(2)). Such microfiche filed with a patent application is to be
`referred to as a microfiche appendix. The microfiche appendix will not
`be part of the printed patent. Reference in the application to the
`microfiche appendixshouldbe madeat the beginningofthespecification
`at the location indicatedin § 1.77(c)(2). Any amendments thereto must
`be made by way of revised microfiche. All computer programlistings
`submitted on paper will be printed as part of the patent.
`(1) Availability ofappendix. Such computerprogramlistings on
`microfiche will be available to the public for inspection, and microfiche
`copies thereof will be available for purchase with the file wrapper and
`contents, after a patent based on such an application is granted or the
`application is otherwise made publicly available.
`(2) Submission requirements. Computer—generated informa-
`tion submitted as an appendix to an application for patentshall be in the
`form of microfiche in accordance with the standards set forth in the
`followingAmerican National (ANSI) orNational MicrographicsAssoci-
`ation (NMA)Standards (Note: As new editions of these standardsare
`published, the latest shalt apply):
`ANSI PH 1.28-1976~Specifications for Photographic Film for
`Archival records, Silver~ Gelatin Type, on Cellulose Ester Base.
`ANSI PH 1.41-1976 Specifications for Photographic Film for
`Archival Records, Silver~ Gelatin Type, on Polyester Base.
`37 CFR 1.96. Submission ofcomputerprogram listings.
`NMA-~-MSI (1971) Quality Standards for Computer Output
`Descriptions of the operation and general content of computer
`Microfilm.
`program fistings should appear in the description portion of the
`ANSI/NMA MS2 (1978) Format and Coding Standards for
`specification. A computerprogram listing for the purpose ofthese rules
`Computer Output Microfilm.
`isdefined asa printoutthatlists in appropriate sequencetheinstructions,
`NMA MSS (ANSI PH 3.9=1975) Microfiche of Documents.
`routines, and other contents of a prograrn for a computer. The program
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`600 ~ 87
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`608.05
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`MANUAL OF PATENT EXAMINING PROCEDURE
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`ANSI PH 2.19 (1959) —Diffuse Transmission Density.
`except as modified orclarified below:
`(i) Either Computer—Output-- Microfilm (COM) output or
`copies of photographed paper copy may be submitted. In the former
`case, NMA standards MS1 and MS2apply;in the latter case, standard —
`MSSapplies.
`(ii) Film submitted shall be first generation (camera film)
`negativeappearing microfiche (withemulsion onthe backsideofthefilm
`when