Case 1:19-cv-11586-FDS Document 168-11 Filed 03/31/21 Page 1 of 5
`Case 1:19-cv-11586—FDS Document 168-11 Filed 03/31/21 Page 1 of 5
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` EXHIBIT K
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`EXHIBIT K
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`Case 1:19-cv-11586-FDS Document 168-11 Filed 03/31/21 Page 2 of 5
`37 C.F.R. § 1.53, 37 C.F.R. § 1.53
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`Code of Federal Regulations - 2000
`37 C.F.R. § 1.53
`CODE OF FEDERAL REGULATIONS
`TITLE 37—PATENTS, TRADEMARKS, AND COPYRIGHTS
`CHAPTER I—PATENT AND TRADEMARK OFFICE, DEPARTMENT OF COMMERCE
`SUBCHAPTER A—GENERAL
`PATENTS
`PART 1—RULES OF PRACTICE IN PATENT CASES
`SUBPART B—NATIONAL PROCESSING PROVISIONS
`THE APPLICATION
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`© 2000 West, a Thomson business. No claim to original U.S. Govt. works
`Current through June 30, 2000, 65 FR 40966
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`§ 1.53 Application number, filing date, and completion of application.
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`(a) Application number. Any papers received in the Patent and Trademark Office which purport to be an application for a
`patent will be assigned an application number for identification purposes.
`(b) Application filing requirements—Nonprovisional application. The filing date of an application for patent filed under this
`section, except for a provisional application under paragraph (c) of this section or a continued prosecution application under
`paragraph (d) of this section, is the date on which a specification as prescribed by 35 U.S.C. 112 containing a description
`pursuant to § 1.71 and at least one claim pursuant to § 1.75, and any drawing required by § 1.81(a) are filed in the Patent and
`Trademark Office. No new matter may be introduced into an application after its filing date. A continuing application, which
`may be a continuation, divisional, or continuation-in-part application, may be filed under the conditions specified in 35 U.S.C.
`120, 121 or 365(c) and § 1.78(a).
`(1) A continuation or divisional application that names as inventors the same or fewer than all of the inventors named in the
`prior application may be filed under this paragraph or paragraph (d) of this section.
`(2) A continuation-in-part application (which may disclose and claim subject matter not disclosed in the prior application) or a
`continuation or divisional application naming an inventor not named in the prior application must be filed under this paragraph.
`(c) Application filing requirements—Provisional application. The filing date of a provisional application is the date on which
`a specification as prescribed by the first paragraph of 35 U.S.C. 112, and any drawing required by § 1.81(a) are filed in the
`Patent and Trademark Office. No amendment, other than to make the provisional application comply with the patent statute and
`all applicable regulations, may be made to the provisional application after the filing date of the provisional application.
`(1) A provisional application must also include the cover sheet required by § 1.51(c)(1) or a cover letter identifying the
`application as a provisional application. Otherwise, the application will be treated as an application filed under paragraph (b)
`of this section.
`(2) An application for patent filed under paragraph (b) of this section may be converted to a provisional application and be
`accorded the original filing date of the application filed under paragraph (b) of this section,
`(i) Provided that a petition requesting the conversion, with the fee set forth in § 1.17(q), is filed prior to the earliest of:
`(A) Abandonment of the application filed under paragraph (b) of this section;
`(B) Payment of the issue fee on the application filed under paragraph (b) of this section;
`(C) Expiration of twelve months after the filing date of the application filed under paragraph (b) of this section; or
`(D) The filing of a request for a statutory invention registration under § 1.293 in the application filed under paragraph (b)
`of this section.
`(ii) The grant of any such petition will not entitle applicant to a refund of the fees which were properly paid in the application
`filed under paragraph (b) of this section.
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` © 2021 Thomson Reuters. No claim to original U.S. Government Works.
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`Case 1:19-cv-11586-FDS Document 168-11 Filed 03/31/21 Page 3 of 5
`37 C.F.R. § 1.53, 37 C.F.R. § 1.53
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`(3) A provisional application filed under paragraph (c) of this section may be converted to a nonprovisional application filed
`under paragraph (b) of this section and accorded the original filing date of the provisional application. The conversion of
`a provisional application to a nonprovisional application will not result in either the refund of any fee properly paid in the
`provisional application or the application of any such fee to the filing fee, or any other fee, for the nonprovisional application.
`A request to convert a provisional application to a nonprovisional application must be accompanied by the fee set forth in §
`1.17(i) and an amendment including at least one claim as prescribed by the second paragraph of 35 U.S.C. 112, unless the
`provisional application under paragraph (c) of this section otherwise contains at least one claim as prescribed by the second
`paragraph of 35 U.S.C. 112. A request to convert a provisional application to a nonprovisional application must also be filed
`prior to the earliest of:
`(i) Abandonment of the provisional application filed under paragraph (c) of this section; or
`(ii) Expiration of twelve months after the filing date of the provisional application filed under paragraph (c) of this section.
`(4) A provisional application is not entitled to the right of priority under 35 U.S.C. 119 or 365(a) or § 1.55, or to the benefit of
`an earlier filing date under 35 U.S.C. 120, 121 or 365(c) or § 1.78 of any other application. No claim for priority under § 1.78(a)
`(3) may be made in a design application based on a provisional application. No request under § 1.293 for a statutory invention
`registration may be filed in a provisional application. The requirements of §§ 1.821 through 1.825 regarding application
`disclosures containing nucleotide and/or amino acid sequences are not mandatory for provisional applications.
`(d) Application filing requirements—Continued prosecution (nonprovisional) application.
`(1) A continuation or divisional application (but not a continuation-in-part) of a prior nonprovisional application may be filed
`as a continued prosecution application under this paragraph, provided that:
`(i) The prior nonprovisional application is:
`(A) A utility or plant application that was filed under 35 U.S.C. 111(a) before May 29, 2000, and is complete as defined by
`§ 1.51(b);
`(B) A design application that is complete as defined by § 1.51(b); or
`(C) The national stage of an international application that was filed under 35 U.S.C. 363 before May 29, 2000, and is in
`compliance with 35 U.S.C. 371; and
`(ii) The application under this paragraph is filed before the earliest of:
`(A) Payment of the issue fee on the prior application, unless a petition under§ 1.313(c) is granted in the prior application;
`(B) Abandonment of the prior application; or
`(C) Termination of proceedings on the prior application.
`(2) The filing date of a continued prosecution application is the date on which a request on a separate paper for an application
`under this paragraph is filed. An application filed under this paragraph:
`(i) Must identify the prior application;
`(ii) Discloses and claims only subject matter disclosed in the prior application;
`(iii) Names as inventors the same inventors named in the prior application on the date the application under this paragraph
`was filed, except as provided in paragraph (d)(4) of this section;
`(iv) Includes the request for an application under this paragraph, will utilize the file jacket and contents of the prior application,
`including the specification, drawings and oath or declaration from the prior application, to constitute the new application, and
`will be assigned the application number of the prior application for identification purposes; and
`(v) Is a request to expressly abandon the prior application as of the filing date of the request for an application under this
`paragraph.
`(3) The filing fee for a continued prosecution application filed under this paragraph is:
`(i) The basic filing fee as set forth in § 1.16; and
`(ii) Any additional § 1.16 fee due based on the number of claims remaining in the application after entry of any amendment
`accompanying the request for an application under this paragraph and entry of any amendments under § 1.116 unentered in the
`prior application which applicant has requested to be entered in the continued prosecution application.
`(4) An application filed under this paragraph may be filed by fewer than all the inventors named in the prior application,
`provided that the request for an application under this paragraph when filed is accompanied by a statement requesting deletion
`of the name or names of the person or persons who are not inventors of the invention being claimed in the new application. No
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` © 2021 Thomson Reuters. No claim to original U.S. Government Works.
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`Case 1:19-cv-11586-FDS Document 168-11 Filed 03/31/21 Page 4 of 5
`37 C.F.R. § 1.53, 37 C.F.R. § 1.53
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`person may be named as an inventor in an application filed under this paragraph who was not named as an inventor in the prior
`application on the date the application under this paragraph was filed, except by way of a petition under § 1.48.
`(5) Any new change must be made in the form of an amendment to the prior application as it existed prior to the filing of an
`application under this paragraph. No amendment in an application under this paragraph (a continued prosecution application)
`may introduce new matter or matter that would have been new matter in the prior application. Any new specification filed with
`the request for an application under this paragraph will not be considered part of the original application papers, but will be
`treated as a substitute specification in accordance with § 1.125.
`(6) The filing of a continued prosecution application under this paragraph will be construed to include a waiver of
`confidentiality by the applicant under 35 U.S.C. 122 to the extent that any member of the public, who is entitled under the
`provisions of § 1.14 to access to, copies of, or information concerning either the prior application or any continuing application
`filed under the provisions of this paragraph, may be given similar access to, copies of, or similar information concerning the
`other application or applications in the file jacket.
`(7) A request for an application under this paragraph is the specific reference required by 35 U.S.C. 120 to every application
`assigned the application number identified in such request. No amendment in an application under this paragraph may delete
`this specific reference to any prior application.
`(8) In addition to identifying the application number of the prior application, applicant should furnish in the request for an
`application under this paragraph the following information relating to the prior application to the best of his or her ability:
`(i) Title of invention;
`(ii) Name of applicant(s); and
`(iii) Correspondence address.
`(9) Envelopes containing only requests and fees for filing an application under this paragraph should be marked “Box CPA.”
`Requests for an application under this paragraph filed by facsimile transmission should be clearly marked “Box CPA.”
`(e) Failure to meet filing date requirements.
`(1) If an application deposited under paragraph (b), (c), or (d) of this section does not meet the requirements of such paragraph
`to be entitled to a filing date, applicant will be so notified, if a correspondence address has been provided, and given a time
`period within which to correct the filing error.
`(2) Any request for review of a notification pursuant to paragraph (e)(1) of this section, or a notification that the original
`application papers lack a portion of the specification or drawing(s), must be by way of a petition pursuant to this paragraph. Any
`petition under this paragraph must be accompanied by the fee set forth in § 1.17(i) in an application filed under paragraphs (b)
`or (d) of this section, and the fee set forth in § 1.17(q) in an application filed under paragraph (c) of this section. In the absence
`of a timely (§ 1.181(f)) petition pursuant to this paragraph, the filing date of an application in which the applicant was notified
`of a filing error pursuant to paragraph (e)(1) of this section will be the date the filing error is corrected.
`(3) If an applicant is notified of a filing error pursuant to paragraph (e)(1) of this section, but fails to correct the filing error within
`the given time period or otherwise timely (§ 1.181(f)) take action pursuant to this paragraph, proceedings in the application will
`be considered terminated. Where proceedings in an application are terminated pursuant to this paragraph, the application may
`be disposed of, and any filing fees, less the handling fee set forth in § 1.21(n), will be refunded.
`(f) Completion of application subsequent to filing—Nonprovisional (including continued prosecution) application. If an
`application which has been accorded a filing date pursuant to paragraph (b) of this section, including a continuation, divisional,
`or continuation-in-part application, does not include the appropriate filing fee or an oath or declaration by the applicant pursuant
`to § 1.63 or § 1.175, or, if an application which has been accorded a filing date pursuant to paragraph (d) of this section does not
`include the appropriate filing fee, applicant will be so notified, if a correspondence address has been provided, and given a period
`of time within which to file the fee, oath or declaration, and the surcharge as set forth in § 1.16(e) in order to prevent abandonment
`of the application. See § 1.63(d) concerning the submission of a copy of the oath or declaration from the prior application for
`a continuation or divisional application. If the required filing fee is not timely paid, or if the processing and retention fee set
`forth in § 1.21(l) is not paid within one year of the date of mailing of the notification required by this paragraph, the application
`may be disposed of. The notification pursuant to this paragraph may be made simultaneously with any notification pursuant
`to paragraph (e) of this section. If no correspondence address is included in the application, applicant has two months from
`the filing date to file the basic filing fee, the oath or declaration in an application under paragraph (b) of this section, and the
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` © 2021 Thomson Reuters. No claim to original U.S. Government Works.
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`Case 1:19-cv-11586-FDS Document 168-11 Filed 03/31/21 Page 5 of 5
`37 C.F.R. § 1.53, 37 C.F.R. § 1.53
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`surcharge as set forth in § 1.16(e) in order to prevent abandonment of the application; or, if no basic filing fee has been paid,
`one year from the filing date to pay the processing and retention fee set forth in§ 1.21(l) to prevent disposal of the application.
`(g) Completion of application subsequent to filing—Provisional application. If a provisional application which has been
`accorded a filing date pursuant to paragraph (c) of this section does not include the appropriate filing fee or the cover sheet
`required by § 1.51(c)(1), applicant will be so notified, if a correspondence address has been provided, and given a period of
`time within which to file the fee, cover sheet, and the surcharge as set forth in § 1.16(l) in order to prevent abandonment of the
`application. If the required filing fee is not timely paid, the application may be disposed of. The notification pursuant to this
`paragraph may be made simultaneously with any notification pursuant to paragraph (e) of this section. If no correspondence
`address is included in the application, applicant has two months from the filing date to file the basic filing fee, cover sheet, and
`the surcharge as set forth in § 1.16(l) in order to prevent abandonment of the application.
`(h) Subsequent treatment of application—Nonprovisional (including continued prosecution) application. An application for
`a patent filed under paragraphs (b) or (d) of this section will not be placed on the files for examination until all its required
`parts, complying with the rules relating thereto, are received, except that certain minor informalities may be waived subject to
`subsequent correction whenever required.
`(i) Subsequent treatment of application—Provisional application. A provisional application for a patent filed under paragraph
`(c) of this section will not be placed on the files for examination and will become abandoned no later than twelve months after
`its filing date pursuant to 35 U.S.C. 111(b)(1).
`(j) Filing date of international application. The filing date of an international application designating the United States of
`America is treated as the filing date in the United States of America under PCT Article 11(3), except as provided in 35 U.S.C.
`102(e).
`
`[24 FR 10332, Dec. 22, 1959, as amended at 48 FR 2709, Jan. 20, 1983; 49 FR 554, Jan. 4, 1984; 50 FR 31826, Aug. 6, 1985;
`53 FR 47808, Nov. 28, 1988; 54 FR 47518, Nov. 15, 1989; 60 FR 20223, April 25, 1995; 62 FR 53186, Oct. 10, 1997; 63 FR
`5734, Feb. 4, 1998; 63 FR 36185, July 2, 1998; 65 FR 14871, March 20, 2000]
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`End of Document
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`© 2021 Thomson Reuters. No claim to original U.S. Government Works.
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` © 2021 Thomson Reuters. No claim to original U.S. Government Works.
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