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The patent will be delivered or mailed upon issuance to the correspondence address of record. See § 1.33(a).
This is a list of United States Code sections, Statutes at Large, Public Laws, and Presidential Documents, which provide rulemaking authority for this CFR Part.
This list is taken from the Parallel Table of Authorities and Rules provided by GPO [Government Printing Office].
It is not guaranteed to be accurate or up-to-date, though we do refresh the database weekly. More limitations on accuracy are described at the GPO site.
§ 2 - Powers and duties
Title 37 published on 2014-07-01
The following are ALL rules, proposed rules, and notices (chronologically) published in the Federal Register relating to 37 CFR Part 1 after this date.
The United States Patent and Trademark Office (USPTO) prepared interim guidance (2014 Interim Patent Eligibility Guidance) for use by USPTO personnel in determining subject matter eligibility in view of then-recent decisions by the U.S. Supreme Court (Supreme Court). The USPTO published the 2014 Interim Patent Eligibility Guidance in the Federal Register, and sought public comment on the 2014 Interim Patent Eligibility Guidance. The USPTO has since produced an update pertaining to patent subject matter eligibility titled July 2015 Update: Subject Matter Eligibility, which is available to the public on the USPTO's Internet Web site, in response to the public comment on the 2014 Interim Patent Eligibility Guidance. The July 2015 Update: Subject Matter Eligibility includes a new set of examples and discussion of various issues raised by the public comments, and is intended to assist examiners in applying the 2014 Interim Patent Eligibility Guidance during the patent examination process. The USPTO is now seeking public comment on the July 2015 Update: Subject Matter Eligibility.
Title I of the Patent Law Treaties Implementation Act of 2012 (“PLTIA”) amends the United States patent laws to implement the provisions of the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs, July 2, 1999, (hereinafter “Hague Agreement”) and is to take effect on the entry into force of the Hague Agreement with respect to the United States. Under the Hague Agreement, qualified applicants may apply for design protection in the Contracting Parties to the Hague Agreement by filing a single, standardized international design application in a single language. The United States Patent and Trademark Office is revising the rules of practice to implement title I of the PLTIA.
The United States Patent and Trademark Office (USPTO) is seeking public input and guidance to direct its continued efforts towards enhancing patent quality. These efforts focus on improving patent operations and procedures to provide the best possible work products, to enhance the customer experience, and to improve existing quality metrics. In pursuit of these goals, the USPTO is launching a comprehensive and enhanced quality initiative. This initiative begins with a request for public comments on the set of proposals outlined in this document and will continue with a two-day “Quality Summit” with the public to discuss the outlined proposals. The conversation with the public held at this Quality Summit, complemented by written comments to these proposals, is the first of many steps toward developing a new paradigm of patent quality at the USPTO. Through an active and long-term partnership with the public, the USPTO seeks to ensure the issuance of the best quality patents and provide the best customer service possible.
The United States Patent and Trademark Office (Office) is revising the rules of practice pertaining to patent term adjustment in view of the decision by the U.S. Court of Appeals for the Federal Circuit (Federal Circuit) in Novartis AG v. Lee. The Federal Circuit confirmed in Novartis that any time consumed by continued examination is subtracted in determining the extent to which the period of application pendency exceeds three years, regardless of when the continued examination was initiated. The Federal Circuit, however, decided that the time consumed by continued examination does not include the time after a notice of allowance, unless the Office actually resumes examination of the application after allowance. Accordingly, the Office is revising the rules of practice to provide that the time consumed by continued examination does not include the time after a notice of allowance, unless the applicant files a request for continued examination after such allowance. The Office also is revising the rules of practice to provide that the submission of a request for continued examination after any notice of allowance has been mailed will constitute a failure of an applicant to engage in reasonable efforts to conclude processing or examination of an application and thus result in a reduction of any period of patent term adjustment. The Office is providing an exception to this patent term adjustment reduction provision for a request for continued examination filed solely to submit information cited in a patent office communication in a counterpart application that is submitted to the Office within thirty days of receipt of the patent office communication. Additionally, the Office is clarifying what papers may be submitted after a notice of allowance without the applicant being considered to have failed to engage in reasonable efforts to conclude processing or examination of the application.
The United States Patent and Trademark Office (USPTO or Office) has prepared interim guidance (2014 Interim Guidance on Patent Subject Matter Eligibility, called “Interim Eligibility Guidance”) for use by USPTO personnel in determining subject matter eligibility under 35 U.S.C. 101 in view of recent decisions by the U.S. Supreme Court (Supreme Court). This Interim Eligibility Guidance supplements the June 25, 2014, Preliminary Examination Instructions in view of the Supreme Court decision in Alice Corp. (June 2014 Preliminary Instructions) and supersedes the March 4, 2014, Procedure For Subject Matter Eligibility Analysis Of Claims Reciting Or Involving Laws Of Nature/Natural Principles, Natural Phenomena, And/Or Natural Products (March 2014 Procedure) issued in view of the Supreme Court decisions in Myriad and Mayo. The USPTO is seeking public comment on this Interim Eligibility Guidance along with additional suggestions on claim examples for explanatory example sets.
The Leahy-Smith America Invents Act (AIA) revised and streamlined the requirements for the inventor's oath or declaration. In implementing the AIA inventor's oath or declaration provisions, the United States Patent and Trademark Office (Office) provided that an applicant may postpone the filing of the inventor's oath or declaration until allowance if the applicant provides an application data sheet indicating the name, residence, and mailing address of each inventor. The rules pertaining to continued prosecution applications (which are applicable only to design applications) require that the prior nonprovisional application of a continued prosecution application be complete, which requires that the prior nonprovisional application contain the inventor's oath or declaration. The Office published an interim rule on March 5, 2014, to revise the rules pertaining to continued prosecution applications to permit the filing of a continued prosecution application even if the prior nonprovisional application does not contain the inventor's oath or declaration so long as the continued prosecution application is filed on or after September 16, 2012, and the prior nonprovisional application contains an application data sheet indicating the name, residence, and mailing address of each inventor (continued prosecution application interim rule). The Office received no comments from the public in response to the continued prosecution application interim rule published on March 5, 2014. This final rule adopts as final the amendments to the rules of practice originally set forth in the continued prosecution application interim rule.
The Leahy-Smith America Invents Act includes provisions for prioritized examination of patent applications (also referred to as “Track I”), which have been implemented by the United States Patent and Trademark Office (Office) in previous rulemakings. The Office published an interim rule on March 5, 2014 (prioritized examination interim rule), to simplify the Track I prioritized examination practice to reduce the number of requests for prioritized examination that must be dismissed. In order to enable rapid processing and examination of those applications, the previous rulemakings provided that a request for Track I prioritized examination requires, upon filing of the application, an inventor's oath or declaration and all required fees, and that the application contain no more than four independent claims, thirty total claims, and no multiple dependent claims. If a request for Track I prioritized examination failed to meet these requirements on filing, then the request was dismissed. After operating under the previous rulemakings for some time, the Office determined that the time period for meeting the identified requirements could be expanded and still enable the Office to timely examine the patent application. Hence, on March 5, 2014, the Office published the prioritized examination interim rule to expand the time period for meeting the identified requirements. The Office received no comments from the public in response. This final rule adopts as final the amendments to the rules of practice originally set forth in the prioritized examination interim rule.
The United States Patent and Trademark (Office) is revising the rules of practice to change the phrase Express Mail or EXPRESS MAIL® to Priority Mail Express® due to the United States Postal Service (USPS) renaming Express Mail® to Priority Mail Express® on July 28, 2013, and to make other changes to conform the nomenclature used in the rules of practice to the current nomenclature used by the USPS.
The electronic sharing of information and documents between intellectual property (IP) offices is critical for increasing the efficiency and quality of patent examination worldwide. Current examples of this sharing include the priority document exchange (PDX) program and the program by which U.S. search results are delivered to the European Patent Office (EPO). In support of electronic file sharing, the United States Patent and Trademark Office (Office) is proposing to amend its rules of practice to include a specific provision by which an applicant can authorize the Office to give a foreign IP office access to all or part of the file contents of an unpublished U.S. patent application in order to satisfy a requirement for information imposed on a counterpart application filed with the foreign intellectual property office. Currently, for unpublished U.S. patent applications, applicants follow one regulatory provision to provide the Office with authorization for a foreign IP office to access an application-as-filed via a PDX program and follow another regulatory provision to provide the Office with authorization to share the file contents with a foreign IP office. The proposed changes to the rules will consolidate the specific provisions of the regulations by which applicants give the Office authority to provide a foreign IP office with access to an application in order to satisfy a requirement for information of the foreign IP office. Additionally, along with changes to the application data sheet (ADS) form, the proposed rule changes will simplify the process for how applicants provide the Office with the required authorization, thereby reducing the resources applicants must expend to comply with these foreign IP office requirements, and enhance the quality of patent examination.