Changes To Implement the First Inventor To File Provisions of the Leahy-Smith America Invents Act, 11023-11059 [2013-03453]

Agencies

• DEPARTMENT OF COMMERCE
• United States Patent and Trademark Office

[Federal Register Volume 78, Number 31 (Thursday, February 14, 2013)]
[Rules and Regulations]
[Pages 11023-11059]
From the Federal Register Online via the Government Printing Office [www.gpo.gov]
[FR Doc No: 2013-03453]



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Vol. 78

Thursday,

No. 31

February 14, 2013

Part IV





Department of Commerce





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 United States Patent and Trademark Office





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37 CFR Part 1





 Changes To Implement and Examination Guidelines for Implementing the 
First Inventor To File Provisions of the Leahy-Smith America Invents 
Act; Final Rules

Federal Register / Vol. 78 , No. 31 / Thursday, February 14, 2013 / 
Rules and Regulations

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DEPARTMENT OF COMMERCE

United States Patent and Trademark Office

37 CFR Part 1

[Docket No. PTO-P-2012-0015]
RIN 0651-AC77


Changes To Implement the First Inventor To File Provisions of the 
Leahy-Smith America Invents Act

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Final rule.

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SUMMARY: The Leahy-Smith America Invents Act (AIA) amends the patent 
laws pertaining to the conditions of patentability to convert the U.S. 
patent system from a ``first to invent'' system to a ``first inventor 
to file'' system; treats U.S. patents and U.S. patent application 
publications as prior art as of their earliest effective U.S., foreign, 
or international filing date; eliminates the requirement that a prior 
public use or sale be ``in this country'' to be a prior art activity; 
and treats commonly owned or joint research agreement patents and 
patent application publications as being by the same inventive entity 
for purposes of novelty, as well as nonobviousness. The AIA also 
repeals the provisions pertaining to statutory invention registrations. 
The United States Patent and Trademark Office (Office or USPTO) is 
revising the rules of practice in patent cases for consistency with, 
and to address the examination issues raised by, the changes in section 
3 of the AIA.

DATES: Effective date: The changes in this final rule are effective on 
March 16, 2013.
    Applicability date: The changes to 37 CFR 1.55 and 1.78 apply to 
any application filed under 35 U.S.C. 111 or 363 on or after March 16, 
2013. The provisions of 1.17 and 37 CFR 1.293 through 1.297 as in 
effect on March 15, 2013, apply to any request for a statutory 
invention registration filed prior to March 16, 2013. New 37 CFR 1.109 
applies to any application for patent, and to any patent issuing 
thereon, that contains, or contained at any time, a claim to a claimed 
invention that has an effective filing date as defined in 35 U.S.C. 
100(i) that is on or after March 16, 2013, and to any application for 
patent, and to any patent issuing thereon, that contains, or contained 
at any time, a specific reference under 35 U.S.C. 120, 121, or 365(c) 
to any patent or application that contains, or contained at any time, a 
claim to a claimed invention that has an effective filing date as 
defined in 35 U.S.C. 100(i) that is on or after March 16, 2013.

FOR FURTHER INFORMATION CONTACT: Susy Tsang-Foster, Legal Advisor 
(telephone (571) 272-7711; electronic mail message (susy.tsang-foster@uspto.gov)) or Linda S. Therkorn, Patent Examination Policy 
Advisor (telephone (571) 272-7837; electronic mail message 
(linda.therkorn@uspto.gov)), of the Office of the Deputy Commissioner 
for Patent Examination Policy.

SUPPLEMENTARY INFORMATION: 

Executive Summary

    Purpose: Section 3 of the AIA, inter alia, amends the patent laws 
to: (1) Convert the U.S. patent system from a ``first to invent'' 
system to a ``first inventor to file'' system; (2) treat U.S. patents 
and U.S. patent application publications as prior art as of their 
earliest effective filing date, regardless of whether the earliest 
effective filing date is based upon an application filed in the United 
States or in another country; (3) eliminate the requirement that a 
prior public use or sale be ``in this country'' to be a prior art 
activity; and (4) treat commonly owned or joint research agreement 
patents and patent application publications as being by the same 
inventive entity for purposes of 35 U.S.C. 102, as well as 35 U.S.C. 
103. These changes in section 3 of the AIA are effective on March 16, 
2013, but apply only to certain applications filed on or after March 
16, 2013. This final rule revises the rules of practice in title 37 of 
the Code of Federal Regulations (CFR) for consistency with, and to 
address the examination issues raised by, the changes in section 3 of 
the AIA.
    The Office sets out the conditions of patentability in 35 U.S.C. 
102 and 103 as interpreted by the case law in the Manual of Patent 
Examining Procedure (MPEP). See MPEP sections 2121 through 2146 (8th 
ed. 2001) (Rev. 9, Aug. 2012) (MPEP). The Office is also issuing 
guidelines and will be training the Patent Examining Corps on how the 
changes to 35 U.S.C. 102 and 103 in section 3 of the AIA impact 
examination procedure and the provisions of the MPEP pertaining to 35 
U.S.C. 102 and 103.
    Summary of Major Provisions: The Office is specifically adopting 
the following changes:
    The Office is adding definitions provided in the AIA to the rules 
of practice.
    The Office is providing for the submission of affidavits or 
declarations showing that: (1) A disclosure upon which a claim 
rejection is based was by the inventor or a joint inventor or by 
another who obtained the subject matter disclosed directly or 
indirectly from the inventor or a joint inventor; or (2) there was a 
prior public disclosure by the inventor or a joint inventor or another 
who obtained the subject matter disclosed directly or indirectly from 
the inventor or a joint inventor. In response to public comment, the 
Office has provided a more flexible approach for submission of an 
affidavit or declaration with evidence of a prior public disclosure. In 
response to similar comments regarding the prior public disclosure 
exception provisions, the Office wants to highlight that there is no 
requirement that the mode of disclosure by an inventor or joint 
inventor be the same as the mode of disclosure of an intervening 
disclosure (e.g., inventor discloses his invention at a trade show and 
the intervening disclosure is in a peer-reviewed journal), as explained 
in more detail in the examination guidelines. Additionally, there is no 
requirement that the disclosure by the inventor or a joint inventor be 
a verbatim or ipsissimis verbis disclosure of an intervening disclosure 
in order for the exception based on a prior public disclosure of 
subject matter by the inventor or a joint inventor to apply. The 
guidelines also clarify that the exception applies to subject matter of 
the intervening disclosure that is simply a more general description of 
the subject matter previously publicly disclosed by the inventor or a 
joint inventor.
    The Office is providing for the situation in which a U.S. patent or 
U.S. patent application publication has a prior art effect as of the 
filing date of a foreign priority application by requiring that the 
certified copy of the foreign application or an interim copy of the 
foreign application be filed within the later of four months from the 
actual filing date of the application filed under 35 U.S.C. 111(a) or 
sixteen months from the filing date of the prior foreign application. 
This requirement does not apply if: (1) The foreign application was 
filed in a foreign intellectual property office participating with the 
Office in a bilateral or multilateral priority document exchange 
agreement (participating foreign intellectual property office); or (2) 
a copy of the foreign application was filed in an application 
subsequently filed in a participating foreign intellectual property 
office that permits the Office to obtain such a copy, and the applicant 
timely requests in a separate document that the Office retrieve such 
copy from

[[Page 11025]]

the participating intellectual property office. The priority document 
exchange program provides for the electronic transmission of priority 
documents to and from participating foreign Intellectual Property 
Offices (if applicant files a request and an authorization) without 
payment of a fee. The current participating offices are the European 
Patent Office (EPO), the Japan Patent Office (JPO), the Korean 
Intellectual Property Office (KIPO), and the World Intellectual 
Property Organization (WIPO).
    The Office is eliminating the provisions directed to statutory 
invention registrations.
    Finally, the Office is adopting additional requirements for 
nonprovisional applications filed on or after March 16, 2013, that 
claim priority to or the benefit of the filing date of an earlier 
application (i.e., foreign, provisional, or nonprovisional application, 
or international application designating the United States of America) 
that was filed prior to March 16, 2013. If such a nonprovisional 
application contains, or contained at any time, a claim to a claimed 
invention that has an effective filing date on or after March 16, 2013, 
the applicant must provide a statement to that effect within the later 
of four months from the actual filing date of the later-filed 
application, four months from the date of entry into the national stage 
in an international application, sixteen months from the filing date of 
the prior-filed application, or the date that a first claim to a 
claimed invention that has an effective filing date on or after March 
16, 2013, is presented in the application. This procedure will permit 
the Office to readily determine whether the nonprovisional application 
is subject to the changes to 35 U.S.C. 102 and 103 in the AIA.
    Costs and Benefits: This rulemaking is not economically significant 
as that term is defined in Executive Order 12866 (Sept. 30, 1993).

Specific Changes to Title 35, United States Code

    The AIA was enacted into law on September 16, 2011. See Public Law 
112-29, 125 Stat. 284 (2011). Section 3 of the AIA specifically amends 
35 U.S.C. 102 to provide that a person shall be entitled to a patent 
unless: (1) The claimed invention was patented, described in a printed 
publication, or in public use, on sale, or otherwise available to the 
public before the effective filing date of the claimed invention (35 
U.S.C. 102(a)(1)); or (2) the claimed invention was described in a 
patent issued under 35 U.S.C. 151, or in an application for patent 
published or deemed published under 35 U.S.C. 122(b), in which the 
patent or application, as the case may be, names another inventor and 
was effectively filed before the effective filing date of the claimed 
invention (35 U.S.C. 102(a)(2)). See 125 Stat. at 285-86. The 
publication of an international application designating the United 
States of America by the World Intellectual Property Organization 
(WIPO) is deemed a publication under 35 U.S.C. 122(b) (except as 
provided in 35 U.S.C. 154(d)). See 35 U.S.C. 374.
    35 U.S.C. 102(b) as amended by section 3 of the AIA provides for 
exceptions to the provisions of 35 U.S.C. 102(a). The exceptions in 35 
U.S.C. 102(b)(1) provide that a disclosure made one year or less before 
the effective filing date of a claimed invention shall not be prior art 
to the claimed invention under 35 U.S.C. 102(a)(1) if: (A) The 
disclosure was made by the inventor or joint inventor or by another who 
obtained the subject matter disclosed directly or indirectly from the 
inventor or a joint inventor (35 U.S.C. 102(b)(1)(A)); or (B) the 
subject matter disclosed had, before such disclosure, been publicly 
disclosed by the inventor or a joint inventor or another who obtained 
the subject matter disclosed directly or indirectly from the inventor 
or a joint inventor (35 U.S.C. 102(b)(1)(B)). See 125 Stat. at 286. The 
exceptions in 35 U.S.C. 102(b)(2) provide that a disclosure shall not 
be prior art to a claimed invention under 35 U.S.C. 102(a)(2) if: (A) 
The subject matter disclosed was obtained directly or indirectly from 
the inventor or a joint inventor (35 U.S.C. 102(b)(2)(A)); (B) the 
subject matter disclosed had, before such subject matter was 
effectively filed under 35 U.S.C. 102(a)(2), been publicly disclosed by 
the inventor or a joint inventor or another who obtained the subject 
matter disclosed directly or indirectly from the inventor or a joint 
inventor (35 U.S.C. 102(b)(2)(B)); or (C) the subject matter disclosed 
and the claimed invention, not later than the effective filing date of 
the claimed invention, were owned by the same person or subject to an 
obligation of assignment to the same person (35 U.S.C. 102(b)(2)(C)). 
See id.
    35 U.S.C. 102(c) as amended by section 3 of the AIA provides for 
common ownership under joint research agreements. 35 U.S.C. 102(c) 
specifically provides that subject matter disclosed and a claimed 
invention shall be deemed to have been owned by the same person or 
subject to an obligation of assignment to the same person in applying 
the provisions of 35 U.S.C. 102(b)(2)(C) if: (1) The subject matter 
disclosed was developed and the claimed invention was made by, or on 
behalf of, one or more parties to a joint research agreement that was 
in effect on or before the effective filing date of the claimed 
invention; (2) the claimed invention was made as a result of activities 
undertaken within the scope of the joint research agreement; and (3) 
the application for patent for the claimed invention discloses or is 
amended to disclose the names of the parties to the joint research 
agreement. See id. The AIA also provides that the enactment of 35 
U.S.C. 102(c) is done with the same intent to promote joint research 
activities that was expressed, including in the legislative history, 
through the enactment of the Cooperative Research and Technology 
Enhancement Act of 2004 (the ``CREATE Act''; Pub. L. 108-453, 118 Stat. 
3596 (2004)), and that the Office shall administer 35 U.S.C. 102(c) in 
a manner consistent with the legislative history of the CREATE Act that 
was relevant to its administration. See 125 Stat. at 287.
    35 U.S.C. 102(d) as amended by section 3 of the AIA provides a 
definition for ``effectively filed'' for purposes of determining 
whether a patent or application for patent is prior art to a claimed 
invention under 35 U.S.C. 102(a)(2). 35 U.S.C. 102(d) provides that for 
purposes of determining whether a patent or application for patent is 
prior art to a claimed invention under 35 U.S.C. 102(a)(2), such patent 
or application shall be considered to have been effectively filed, with 
respect to any subject matter described in the patent or application, 
on the earliest of: (1) The actual filing date of the patent or the 
application for patent; or (2) if the patent or application for patent 
is entitled to claim a right of priority or the benefit of an earlier 
filing date under 35 U.S.C. 119, 120, 121, or 365 based upon one or 
more prior filed applications for patent, the filing date of the 
earliest such application that describes the subject matter. See 125 
Stat. at 286-87.
    The AIA provides a number of definitions for terms used in title 35 
of the United States Code. See 125 Stat. at 285. The term ``inventor'' 
means the individual or, if a joint invention, the individuals 
collectively who invented or discovered the subject matter of the 
invention, and the terms ``joint inventor'' and ``coinventor'' mean any 
one of the individuals who invented or discovered the subject matter of 
a joint invention. 35 U.S.C. 100(f) and (g). The term ``joint research 
agreement'' means a written contract, grant, or cooperative

[[Page 11026]]

agreement entered into by two or more persons or entities for the 
performance of experimental, developmental, or research work in the 
field of the claimed invention. 35 U.S.C. 100(h). The term ``effective 
filing date'' for a claimed invention in a patent or application for 
patent (other than a reissue application or a reissued patent) means 
the earliest of: (1) The actual filing date of the patent or the 
application for the patent containing a claim to the invention; or (2) 
the filing date of the earliest application for which the patent or 
application is entitled, as to such invention, to a right of priority 
or the benefit of an earlier filing date under 35 U.S.C. 119, 120, 121, 
or 365. 35 U.S.C. 100(i)(1). The ``effective filing date'' for a 
claimed invention in a reissued patent or an application for reissue 
shall be determined by deeming the claim to the invention to have been 
contained in the patent for which reissue was sought. 35 U.S.C. 
100(i)(2). The term ``claimed invention'' means the subject matter 
defined by a claim in a patent or an application for a patent. 35 
U.S.C. 100(j).
    AIA 35 U.S.C. 103 provides that a patent for a claimed invention 
may not be obtained, notwithstanding that the claimed invention is not 
identically disclosed as set forth in 35 U.S.C. 102, if the differences 
between the claimed invention and the prior art are such that the 
claimed invention as a whole would have been obvious before the 
effective filing date of the claimed invention to a person having 
ordinary skill in the art to which the claimed invention pertains. See 
125 Stat. at 287. AIA 35 U.S.C. 103 also provides that patentability 
shall not be negated by the manner in which the invention was made. See 
id.
    The AIA eliminates the provisions in 35 U.S.C. 135 for patent 
interference proceedings and replaces them with patent derivation 
proceedings. See 125 Stat. at 289-90. The Office has implemented the 
patent derivation proceedings provided for in the AIA in a separate 
rulemaking. See Changes To Implement Derivation Proceedings, 77 FR 
56068 (Sept. 11, 2012). The AIA also replaces the interference 
provisions of 35 U.S.C. 291 with derivation provisions. See 125 Stat. 
at 288-89.
    The AIA repeals the provisions of 35 U.S.C. 104 (special provisions 
for inventions made abroad) and 157 (statutory invention 
registrations). See 125 Stat. at 287. The AIA also makes conforming 
changes to 35 U.S.C. 111, 119, 120, 134, 145, 146, 154, 172, 202(c), 
287, 305, 363, 374, and 375(a). See 125 Stat. at 287-88, and 290-91.
    The AIA provides that the changes in section 3 that are being 
implemented in this rulemaking take effect on March 16, 2013. See 125 
Stat. at 293. The AIA also provides that the changes (other than the 
repeal of 35 U.S.C. 157) in section 3 apply to any application for 
patent, and to any patent issuing thereon, that contains, or contained 
at any time: (1) A claim to a claimed invention that has an effective 
filing date as defined in 35 U.S.C. 100(i) that is on or after March 
16, 2013; or (2) a specific reference under 35 U.S.C. 120, 121, or 
365(c) to any patent or application that contains, or contained at any 
time, such a claim. See id.
    The AIA also provides that the provisions of 35 U.S.C. 102(g), 135, 
and 291 as in effect on March 15, 2013, shall apply to each claim of an 
application for patent, and any patent issued thereon, for which the 
amendments made by this section also apply, if such application or 
patent contains, or contained at any time: (1) A claim to an invention 
having an effective filing date as defined in 35 U.S.C. 100(i) that 
occurs before March 16, 2013; or (2) a specific reference under 35 
U.S.C. 120, 121, or 365(c) to any patent or application that contains, 
or contained at any time, such a claim. See id.

General Discussion of the Changes From Proposed Rules

    The Office published a notice of proposed rulemaking and a notice 
of proposed examination guidelines on July 26, 2012, to implement the 
first inventor to file provisions of section 3 of the AIA. See Changes 
To Implement the First Inventor To File Provisions of the Leahy-Smith 
America Invents Act, 77 FR 43742 (July 26, 2012) (notice of proposed 
rulemaking), and Examination Guidelines for Implementing the First 
Inventor To File Provisions of the Leahy-Smith America Invents Act, 77 
FR 43759 (July 26, 2012) (notice of proposed examination guidelines). 
The Office also conducted a roundtable discussion with the public on 
September 6, 2012, to obtain public input from organizations and 
individuals on issues relating to the Office's proposed implementation 
of the first inventor to file provisions of the AIA. See Notice of 
Roundtable on the Implementation of the First Inventor To File 
Provisions of the Leahy-Smith America Invents Act, 77 FR 49427 (Aug. 
16, 2012). The Office also conducted a number of roadshow presentations 
in September of 2012 that included a discussion of the first inventor 
to file provisions of the AIA. In view of the input from the public, 
the Office is making the following changes to the proposed rules of 
practice pertaining to the first inventor to file provisions in section 
3 of the AIA in this final rule:
    Changes to the Time Period for Submitting a Certified Copy of the 
Foreign Priority Application: The Office proposed to require that the 
certified copy of the foreign application be filed within the later of 
four months from the actual filing date of the application or sixteen 
months from the filing date of the prior foreign application. See 
Changes To Implement the First Inventor To File Provisions of the 
Leahy-Smith America Invents Act, 77 FR at 43743, 43745, and 43754. The 
Office received a number of comments indicating that the Office should 
consider alternative means of ensuring that a copy of any priority 
application is available. The Office is requiring in this final rule 
that a certified copy of the foreign application be filed within the 
later of four months from the actual filing date of the application or 
sixteen months from the filing date of the prior foreign application, 
but is also providing that this requirement does not apply if: (1) The 
priority application was filed in a participating foreign intellectual 
property office, or if a copy of the foreign application was filed in 
an application subsequently filed in a participating foreign 
intellectual property office that permits the Office to obtain such a 
copy, and the Office either receives a copy of the foreign application 
from the participating foreign intellectual property office or a 
certified copy of the foreign application within the pendency of the 
application and before the patent is granted; or (2) the applicant 
provides an interim copy of the original foreign application within the 
later of four months from the actual filing date of the application or 
sixteen months from the filing date of the prior foreign application, 
and files a certified copy of the foreign application within the 
pendency of the application and before the patent is granted. The 
Office is additionally providing a ``good cause'' exception in the rule 
for a belated certified copy of the foreign application.
    Changes To the Statements Required For Nonprovisional Applications 
Claiming Priority to or the Benefit of an Application filed Prior to 
March 16, 2013: The Office proposed two requirements for nonprovisional 
applications filed on or after March 16, 2013, that claim priority to 
or the benefit of the filing date of an earlier application (i.e., 
foreign, provisional, nonprovisional application, or international 
application designating the United States of America) that was filed 
prior to March 16, 2013 (transition

[[Page 11027]]

application). First, the Office proposed to require that if a 
transition application contains, or contained at any time, a claim to a 
claimed invention that has an effective filing date on or after March 
16, 2013, the applicant must provide a statement to that effect within 
the later of four months from the actual filing date of the later-filed 
application, four months from the date of entry into the national stage 
in an international application, sixteen months from the filing date of 
the prior-filed application, or the date that a first claim to a 
claimed invention that has an effective filing date on or after March 
16, 2013, is presented in the application. See Changes To Implement the 
First Inventor To File Provisions of the Leahy-Smith America Invents 
Act, 77 FR at 43743, 43745, 43747-48, and 43755-57. Second, the Office 
proposed that if a transition application does not contain a claim to a 
claimed invention that has an effective filing date on or after March 
16, 2013, but discloses subject matter not also disclosed in the prior-
filed foreign, provisional, nonprovisional application, or 
international application designating the United States of America, the 
applicant must provide a statement that the later filed application 
includes subject matter not disclosed in the prior-filed foreign, 
provisional, nonprovisional application, or international application 
designating the United States of America within the later of four 
months from the actual filing date of the later-filed application, four 
months from the date of entry into the national stage in an 
international application, or sixteen months from the filing date of 
the prior-filed application. See id. The Office received a number of 
comments expressing various concerns with a requirement that an 
applicant determine the effective filing date of the claims in his or 
her application, and questioning the need for any such statement in an 
application that never contained a claim to a claimed invention that 
has an effective filing date on or after March 16, 2013.
    The Office is providing in this final rule that a statement is 
required only if a transition application contains, or contained at any 
time, a claim to a claimed invention that has an effective filing date 
on or after March 16, 2013. Thus, no statement is required if a 
transition application discloses subject matter not also disclosed in 
the prior-filed foreign, provisional, nonprovisional application, or 
international application designating the United States of America but 
does not ever contain a claim to a claimed invention that has an 
effective filing date on or after March 16, 2013. The Office is also 
providing that an applicant is not required to provide such a statement 
if the applicant reasonably believes on the basis of information 
already known to the individuals designated as having a duty of 
disclosure with respect to the application that the transition 
application does not, and did not at any time, contain a claim to a 
claimed invention that has an effective filing date on or after March 
16, 2013. Thus, an applicant in this situation is not required to 
conduct any additional investigation or analysis to determine the 
effective filing date of the claims in their applications.
    Changes To Affidavits or Declarations Showing a Prior Disclosure by 
an Inventor or Another Who Obtained the Subject Matter From an 
Inventor: The Office proposed setting out the standard for a successful 
affidavit or declaration where the disclosure is the inventor's own 
work (i.e., a satisfactory showing that the inventor or a joint 
inventor is in fact the inventor of the subject matter of the 
disclosure) and where the disclosure was by another who obtained the 
subject matter disclosed directly or indirectly from the inventor or a 
joint inventor (i.e., showing that the inventor or a joint inventor is 
the inventor of the subject matter disclosed and directly or indirectly 
communicated the subject matter disclosed to another) in the rules of 
practice. See Changes To Implement the First Inventor To File 
Provisions of the Leahy-Smith America Invents Act, 77 FR at 43743, 
43749-51, and 43758-59. The Office also proposed to require the 
applicant to file a petition for a derivation proceeding if a rejection 
is based upon a U.S. patent or U.S. patent application publication of a 
patented or pending application naming another inventor and the patent 
or pending application claims an invention that is the same or 
substantially the same as the applicant's claimed invention. See 
Changes To Implement the First Inventor To File Provisions of the 
Leahy-Smith America Invents Act, 77 FR at 43751 and 43759. The Office 
received a number of comments suggesting that a procedural provision 
should not set out the standard for a successful affidavit or 
declaration and suggesting that the Office should not require an 
applicant to file a petition for a derivation proceeding. The Office is 
revising the provision in this final rule to simply specify: (1) When 
an affidavit or declaration of attribution or prior public disclosure 
may be used to disqualify a disclosure as prior art; and (2) the 
procedural requirements for such an affidavit or declaration. The 
Office is also replacing the provision that the Office may require the 
applicant to file a petition for a derivation proceeding with a 
provision indicating that such an affidavit or declaration may not be 
available to overcome a rejection when the affidavit or declaration 
contends that an inventor named in the U.S. patent or U.S. patent 
application publication derived the claimed invention from the inventor 
or a joint inventor named in the application or patent, and that in 
such a case, an applicant or a patent owner may file a petition for a 
derivation proceeding.
    The Office has sought to address the concerns of its stakeholders 
as expressed in the public comment, and plans to seek additional public 
comment on the rules of practice pertaining to the first inventor to 
file provisions of section 3 of the AIA after the Office and the public 
have gained experience with the rules of practice pertaining to the 
first inventor to file provisions in operation.

Discussion of Specific Rules

    The following is a discussion of the amendments to Title 37 of the 
Code of Federal Regulations, part 1, in this final rule.
    Section 1.9: Section 1.9 is amended to add the definition of the 
terms used throughout the rules.
    Section 1.9(d)(1) provides that the term ``inventor'' or 
``inventorship'' as used in this chapter means the individual or, if a 
joint invention, the individuals collectively who invented or 
discovered the subject matter of the invention. See 35 U.S.C. 100(f). 
While the term ``inventorship'' is not used in 35 U.S.C. 100(f), the 
term ``inventorship'' is currently used throughout the rules of 
practice to mean the individual or, if a joint invention, the 
individuals collectively who invented or discovered the subject matter 
of the invention. Section 1.9(d)(2) provides that the term ``joint 
inventor'' or ``coinventor'' as used in this chapter means any one of 
the individuals who invented or discovered the subject matter of a 
joint invention. See 35 U.S.C. 100(g).
    Section 1.9(e) provides that the term ``joint research agreement'' 
as used in this chapter means a written contract, grant, or cooperative 
agreement entered into by two or more persons or entities for the 
performance of experimental, developmental, or research work in the 
field of the claimed invention. See 35 U.S.C. 100(h).
    Section 1.9(f) provides that the term ``claimed invention'' as used 
in this chapter means the subject matter

[[Page 11028]]

defined by a claim in a patent or an application for a patent. See 35 
U.S.C. 100(j).
    Section 1.14: Section 1.14(f) is amended to correct the spelling of 
the word ``proprietary.''
    Section 1.17: Section 1.17 is amended to eliminate the provisions 
pertaining to statutory invention registrations in Sec.  1.17(g), (n), 
and (o). See discussion of the provisions of Sec. Sec.  1.293 through 
1.297.
    Sections 1.17(g) and (i) are also amended for consistency with the 
changes to Sec.  1.55. See discussion of Sec.  1.55.
    Section 1.53: Section 1.53(b) is amended for consistency with the 
reorganization of Sec.  1.78. See discussion of Sec.  1.78.
    Section 1.53(c) is amended to eliminate the provisions pertaining 
to statutory invention registrations. See discussion of the provisions 
of Sec. Sec.  1.293 through 1.297.
    Section 1.53(j) is removed as the provisions of Sec.  1.53 pertain 
to applications filed under 35 U.S.C. 111 and the discussion of former 
Sec.  1.53(j) pertained to applications filed under the Patent 
Cooperation Treaty (PCT).
    Section 1.55: Section 1.55 is reorganized into paragraphs (a) 
through (l) for clarity.
    Section 1.55(a) provides generally that an applicant in a 
nonprovisional application may claim priority to one or more prior 
foreign applications under the conditions specified in 35 U.S.C. 119(a) 
through (d) and (f), 172, and 365(a) and (b) and Sec.  1.55.
    Section 1.55(b) provides that the nonprovisional application must 
be filed not later than twelve months (six months in the case of a 
design application) after the date on which the foreign application was 
filed, or that the nonprovisional application is entitled to claim the 
benefit under 35 U.S.C. 120, 121, or 365(c) of an application that was 
filed not later than twelve months (six months in the case of a design 
application) after the date on which the foreign application was filed. 
See MPEP Sec.  201.13. While section 3(g)(1) of the AIA amended 35 
U.S.C. 172 to eliminate the reference to ``the time specified in 
section 102(d)'' in view of the elimination of the premature foreign 
patenting provisions of pre-AIA 35 U.S.C. 102(d), the AIA did not 
otherwise change the provision in 35 U.S.C. 172 that the right of 
priority provided for by 35 U.S.C. 119(a) through (d) shall be six 
months in the case of designs. See MPEP Sec.  1504.10. Section 1.55(b) 
also provides that this twelve-month period is subject to 35 U.S.C. 
21(b) (and Sec.  1.7(a)) and PCT Rule 80.5, and the six-month period is 
subject to 35 U.S.C. 21(b) and Sec.  1.7(a). 35 U.S.C. 21(b) and Sec.  
1.7(a) provide that when the day, or the last day, for taking an action 
(e.g., filing a nonprovisional application within twelve months of the 
date on which the foreign application was filed) or paying a fee in the 
Office falls on Saturday, Sunday, or a Federal holiday within the 
District of Columbia, the action may be taken, or fee paid, on the next 
succeeding secular or business day. PCT Rule 80.5 has similar 
provisions relating to the expiration of any period during which any 
document or fee in an international application must reach a national 
Office or intergovernmental organization.
    Section 1.55(c) pertains to the time for filing a priority claim 
and certified copy of a foreign application in an international 
application entering the national stage under 35 U.S.C., which 
corresponds to former Sec.  1.55(a)(1)(ii). Section 1.55(c) provides 
that in an international application entering the national stage under 
35 U.S.C., the claim for priority must be made and a certified copy of 
the foreign application must be filed within the time limit set forth 
in the PCT and the Regulations under the PCT. Note that it is 
permissible, but not required under Sec.  1.55(c), to present the claim 
for priority in an application data sheet in an international 
application entering the national stage under 35 U.S.C.
    Section 1.55(d) pertains to the time for filing a priority claim in 
an application filed under 35 U.S.C. 111(a).
    Section 1.55(d) also requires the claim for priority to be 
presented in an application data sheet. See Changes To Implement the 
Inventor's Oath or Declaration Provisions of the Leahy-Smith America 
Invents Act, 77 FR 48776, 48818 (Aug. 14, 2012). Section 1.55(d) does 
not include the requirement of former Sec.  1.55(a)(1)(i) for an 
identification of any foreign application for the same subject matter 
having a filing date before that of the application for which priority 
is claimed, but otherwise contains the provisions of former Sec.  
1.55(a)(1)(i).
    Section 1.55(d) does not provide for an application under 35 U.S.C. 
111(b) because an application under 35 U.S.C. 111(b) may not claim 
priority to or the benefit of an earlier filed application. See 35 
U.S.C. 111(b)(7).
    Section 1.55(e) pertains to a waiver of claims for priority and 
acceptance of unintentionally delayed claims for priority under 35 
U.S.C. 119(a) through (d) or (f), or 365(a) in an application filed 
under 35 U.S.C. 111(a). Section 1.55(e) also requires that a petition 
to accept a delayed claim for priority be accompanied by a certified 
copy of the foreign application if required by Sec.  1.55(f), unless 
previously submitted. Section 1.55(h)(4) permits applicants to request 
in a separate document that the Office obtain a copy of the foreign 
application that was filed in a nonparticipating intellectual property 
office from a participating intellectual property office that permits 
the Office to obtain such a copy to be filed with a petition under 
Sec.  1.55(e), and Sec.  1.55(i)(1) permits an interim copy to be filed 
with a petition under Sec.  1.55(e). Section 1.55(e) otherwise contains 
the provisions of former Sec.  1.55(c).
    Section 1.55(f) pertains to the time for filing a certified copy of 
the foreign application in an application filed under 35 U.S.C. 111(a). 
Section 1.55(f) provides that in an original application filed under 35 
U.S.C. 111(a), a certified copy of the foreign application must be 
filed within the later of four months from the actual filing date of 
the application or sixteen months from the filing date of the prior 
foreign application, except as provided in Sec.  1.55(h) or (i). 
Section 1.55(f) also provides that the time period in Sec.  1.55(f) 
does not apply in a design application. Since U.S. patent application 
publications (as well as U.S. patents) will have a prior art effect as 
of the earliest priority date (for subject matter disclosed in the 
priority application) with respect to applications subject to AIA 35 
U.S.C. 102, the Office needs to ensure that it has a copy of the 
priority application by the time of publication. The time period of 
four months from the actual filing date of the application or sixteen 
months from the filing date of the prior foreign application is 
consistent with the international norm for when the certified copy of 
the foreign application needs to be filed in an application. See PCT 
Rule 17.1(a).
    Section 1.55(f) further provides that if a certified copy of the 
foreign application is not filed within the later of four months from 
the actual filing date of the application or sixteen months from the 
filing date of the prior foreign application, and the exceptions in 
Sec.  1.55(h) and (i) are not applicable, the certified copy of the 
foreign application must be accompanied by a petition including a 
showing of good and sufficient cause for the delay and the petition fee 
set forth in Sec.  1.17(g). The Office is including a provision in 
Sec.  1.55(f) to provide for the belated filing of a certified copy of 
the foreign application to provide a lower standard (good and 
sufficient cause versus an extraordinary situation) and lower fee ($200 
petition fee set forth in Sec.  1.17(g) versus the $400 petition fee 
set forth in

[[Page 11029]]

Sec.  1.17(f)) than would otherwise be applicable for a petition under 
Sec.  1.183 to waive or suspend a requirement of the regulations in 
such a situation.
    Section 1.55(g) provides requirements for filing a priority claim, 
certified copy of foreign application, and translation that are 
applicable in all applications.
    Section 1.55(g)(1) corresponds to the provisions of former Sec.  
1.55(a)(2). Section 1.55(g)(1) provides that the claim for priority and 
the certified copy of the foreign application specified in 35 U.S.C. 
119(b) or PCT Rule 17 must, in any event, be filed in or received by 
the Office within the pendency of the application and before the patent 
is granted. Section 1.55(g) does not in any way supersede the timing 
requirements of Sec.  1.55(c) through (f) for a claim for priority and 
the certified copy of the foreign application. Section 1.55(g)(1) 
simply indicates that the claim for priority and the certified copy of 
the foreign application must be filed in or received by the Office 
within the pendency of the application and before the patent is granted 
in all situations. For example, if a petition to accept a delayed claim 
for priority is filed under Sec.  1.55(e), the claim for priority and 
the certified copy of the foreign application must still be filed 
within the pendency of the application and before the patent is 
granted. Section 1.55(g)(1) also provides that if the claim for 
priority or the certified copy of the foreign application is filed 
after the date the issue fee is paid, it must also be accompanied by 
the processing fee set forth in Sec.  1.17(i), but the patent will not 
include the priority claim unless corrected by a certificate of 
correction under 35 U.S.C. 255 and Sec.  1.323.
    Section 1.55(g)(2) corresponds to the provisions of former Sec.  
1.55(a)(3). Section 1.55(g)(2) provides that the Office may require 
that the claim for priority and the certified copy of the foreign 
application be filed earlier than otherwise provided in Sec.  1.55: (1) 
When the application is involved in an interference (see Sec.  41.202 
of this title) or derivation (see part 42 of this title) proceeding; 
(2) when necessary to overcome the date of a reference relied upon by 
the examiner; or (3) when deemed necessary by the examiner. 
Notwithstanding the time period requirement of 1.55(f), this provision 
is still needed to provide for situations where the Office is examining 
an application within four months from the filing date of the 
application such as an application examined under the Office's Track I 
prioritized examination program. See Changes To Implement the 
Prioritized Examination Track (Track I) of the Enhanced Examination 
Timing Control Procedures Under the Leahy-Smith America Invents Act, 76 
FR 59050 (Sept. 23, 2011), and Changes To Implement the Prioritized 
Examination for Requests for Continued Examination, 76 FR 78566 (Dec. 
19, 2011).
    Section 1.55(g)(3) corresponds to the provisions of former Sec.  
1.55(a)(4)(i). Section 1.55(g)(3) provides that an English language 
translation of a non-English language foreign application is not 
required except: (1) When the application is involved in an 
interference (see Sec.  41.202 of this title) or derivation (see part 
42 of this title) proceeding; (2) when necessary to overcome the date 
of a reference relied upon by the examiner; or (3) when specifically 
required by the examiner.
    Section 1.55(g)(4) corresponds to the provisions of former Sec.  
1.55(a)(4)(ii). Section 1.55(g)(4) provides that if an English language 
translation of a non-English language foreign application is required, 
it must be filed together with a statement that the translation of the 
certified copy is accurate.
    Section 1.55(h) provides that the requirement in Sec.  1.55(c), 
(f), and (g) for a certified copy of the foreign application to be 
filed within the time limit set forth in Sec.  1.55(c), (f), and (g) 
will be considered satisfied if the Office receives a copy of the 
priority document through the priority document exchange program within 
the period specified in Sec.  1.55(g)(1). See Changes To Implement 
Priority Document Exchange Between Intellectual Property Offices, 72 FR 
1664 (Jan. 16, 2007). Section 1.55(h) specifically provides that this 
requirement for a timely filed certified copy of the foreign 
application will be considered satisfied if: (1) The foreign 
application was filed in a foreign intellectual property office 
participating with the Office in a bilateral or multilateral priority 
document exchange agreement (participating foreign intellectual 
property office); (2) the claim for priority is presented in an 
application data sheet (Sec.  1.76(b)(6)), identifying the foreign 
application for which priority is claimed, by specifying the 
application number, country (or intellectual property authority), day, 
month, and year of its filing, and including the information necessary 
for the participating foreign intellectual property office to provide 
the Office with access to the foreign application; and (3) the copy of 
the foreign application is received by the Office from the 
participating foreign intellectual property office, or a certified copy 
of the foreign application is filed, within the pendency of the 
application and before the patent is granted (as set forth in Sec.  
1.55(g)(1)).
    Section 1.55 no longer requires that a request that the Office 
obtain a copy of the foreign application be made within the later of 
four months from the filing date of the application or sixteen months 
from the filing date of the foreign application if the foreign 
application was filed in a participating foreign intellectual property 
office. This is because the Office treats a priority claim (presented 
in an application data sheet) to an application filed in a 
participating foreign intellectual property office as such a request, 
and any priority claim must be filed within the later of four months 
from the filing date of the application filed under 35 U.S.C. 111(a) or 
sixteen months from the filing date of the foreign application (except 
as provided in Sec.  1.55(e)).
    Section 1.55(h) also provides that if the foreign application was 
not filed in a participating foreign intellectual property office, but 
a copy of the foreign application was filed in an application 
subsequently filed in a participating foreign intellectual property 
office that permits the Office to obtain such a copy, the applicant 
must also file a request in a separate document that the Office obtain 
a copy of the foreign application from the participating intellectual 
property office. This request must identify the participating 
intellectual property office and the application number and filing date 
of the subsequent application in which a copy of the foreign 
application was filed, and be filed within the later of sixteen months 
from the filing date of the prior foreign application or four months 
from the actual filing date of an application under 35 U.S.C. 111(a), 
within four months from the later of the date of commencement (Sec.  
1.491(a)) or the date of the initial submission under 35 U.S.C. 371 in 
an application entering the national stage under 35 U.S.C. 371, or with 
a petition under Sec.  1.55(e). Applicants can use Form PTO/SB/38 
(Request to Retrieve Electronic Priority Application(s)) to file such a 
request.
    The Office has provided information concerning the priority 
document exchange program on its Internet Web site (www.uspto.gov). 
This information includes the intellectual property offices that 
participate in the priority document exchange program, as well as the 
information necessary for each participating foreign intellectual 
property office to provide the Office with access to the foreign 
application.
    The Office appreciates that an applicant may discover that the 
Office will not receive a copy of a foreign application through the 
priority

[[Page 11030]]

document exchange program until after the expiration of the time frame 
specified in Sec.  1.55(f). In this situation, an applicant who 
otherwise meets the conditions of Sec.  1.55(h) may satisfy the 
requirement of Sec.  1.55(h)(3) by filing a certified copy of the 
foreign application in the Office within the pendency of the 
application and before the patent is granted.
    Note that the Office cannot obtain a copy of a design application 
to which priority is claimed, or a foreign application to which 
priority is claimed in a design application, through the priority 
document exchange program. In addition, note that the Office can obtain 
a PCT application to which priority is claimed through the priority 
document exchange program for PCT applications filed in a limited 
number of PCT Receiving Offices (currently, RO/DK (Denmark), RO/FI 
(Finland), RO/IB (International Bureau), and RO/SE (Sweden)).
    Applicants continue to bear the ultimate responsibility for 
ensuring that the priority document is filed by the time required under 
Sec.  1.55(g)(1). Accordingly, applicants are encouraged to check as 
necessary to confirm receipt by the Office of appropriate documents. 
Priority documents retrieved from a participating foreign intellectual 
property office will bear the document description: ``Priority 
documents electronically retrieved by USPTO from a participating IP 
Office.''
    Section 1.55(i) permits an applicant to provide an ``interim copy'' 
of the original foreign application from the applicant's own records to 
provide for the situation in which the applicant cannot obtain a 
certified copy of the foreign application within the time limit set 
forth in Sec.  1.55(f), although there is no requirement that an 
applicant be unable to obtain a certified copy of the foreign 
application within the time limit set forth in Sec.  1.55(f) to use 
Sec.  1.55(i). Section 1.55(i) provides that the requirement in Sec.  
1.55(f) for a certified copy of the foreign application to be filed 
within the time limit set forth in Sec.  1.55(f) will be considered 
satisfied if the applicant files a copy of the original foreign 
application clearly labeled as ``Interim Copy,'' including the 
specification, and any drawings or claims upon which it is based. 
Section 1.55(i) also provides that the interim copy of the foreign 
application must be filed together with a separate cover sheet 
identifying the foreign application by specifying the application 
number, country (or intellectual property authority), day, month, and 
year of its filing, and stating that the copy filed in the Office is a 
true copy of the original application as filed in the foreign country 
(or intellectual property authority). Section 1.55(i) also provides 
that the interim copy of the foreign application and cover sheet must 
be filed within the later of sixteen months from the filing date of the 
prior foreign application or four months from the actual filing date of 
an application under 35 U.S.C. 111(a), or with a petition under Sec.  
1.55(e). Section 1.55(i) finally provides that a certified copy of the 
foreign application ultimately must be filed within the period 
specified in Sec.  1.55(g)(1). Thus, providing an interim copy of a 
foreign application under Sec.  1.55(i) satisfies the requirement for a 
certified copy of the foreign application to be filed within the time 
limit set forth in Sec.  1.55(f), but a certified copy of the foreign 
application must still be filed before a patent is granted.
    Section 1.55(j) pertains to applications filed on or after March 
16, 2013, that claim priority to a foreign application filed prior to 
March 16, 2013. Section 1.55(j) provides that if a nonprovisional 
application filed on or after March 16, 2013, claims priority to a 
foreign application filed prior to March 16, 2013, and also contains, 
or contained at any time, a claim to a claimed invention that has an 
effective filing date on or after March 16, 2013, the applicant must 
provide a statement to that effect within the later of four months from 
the actual filing date of the nonprovisional application, four months 
from the date of entry into the national stage as set forth in Sec.  
1.491 in an international application, sixteen months from the filing 
date of the prior-filed foreign application, or the date that a first 
claim to a claimed invention that has an effective filing date on or 
after March 16, 2013, is presented in the nonprovisional application. 
Section 1.55(j) further provides that an applicant is not required to 
provide such a statement if the applicant reasonably believes on the 
basis of information already known to the individuals designated in 
Sec.  1.56(c) that the nonprovisional application does not, and did not 
at any time, contain a claim to a claimed invention that has an 
effective filing date on or after March 16, 2013.
    This information is needed to assist the Office in determining 
whether the nonprovisional application is subject to AIA 35 U.S.C. 102 
and 103 or pre-AIA 35 U.S.C. 102 and 103. If the Office must determine 
on its own the effective filing date of every claim ever presented in a 
nonprovisional application filed on or after March 16, 2013, that 
claims priority to or the benefit of a foreign application filed prior 
to March 16, 2013, the time required to examine an application will 
significantly increase. This in turn would result in an inefficient 
examination process that leads to increased examination costs, higher 
patent pendency, and/or reduced patent quality. The applicant, on the 
other hand, should be far more familiar with the contents of both the 
transition application and its priority or benefit application(s) than 
the examiner. Therefore, the Office is requiring the applicant, who is 
in the best position to know the effective filing date of each claimed 
invention, to indicate whether application contains, or contained at 
any time, a claimed invention that has an effective filing date on or 
after March 16, 2013.
    This provision is tailored to the transition to 35 U.S.C. 102 and 
103 under the AIA. For a nonprovisional application filed on or after 
March 16, 2013, that claims priority to a foreign application, the 
applicant would not be required to provide any statement if: (1) The 
nonprovisional application claims only subject matter disclosed in a 
foreign application filed prior to March 16, 2013; or (2) the 
nonprovisional application claims only priority to a foreign 
application filed on or after March 16, 2013. Section 1.55(j) also does 
not require that the applicant identify how many or which claims in the 
nonprovisional application have an effective filing date on or after 
March 16, 2013, or that the applicant identify the subject matter in 
the nonprovisional application not also disclosed in the foreign 
application. Section 1.55(j) requires only that the applicant state 
that there is a claim in the nonprovisional application that has an 
effective filing date on or after March 16, 2013.
    The Office may issue a requirement for information under Sec.  
1.105 if an applicant takes conflicting positions on whether an 
application contains, or contained at any time, a claim to a claimed 
invention having an effective filing date on or after March 16, 2013. 
For example, the Office may require the applicant to identify where 
there is written description support under 35 U.S.C. 112(a) in the pre-
AIA application for each claim if an applicant provides the statement 
under Sec.  1.55(j) but later argues that the application should have 
been examined as a pre-AIA application because the application does not 
actually contain a claim to a claimed invention having an effective 
filing date on or after March 16, 2013. The Office would not issue a 
requirement for information under Sec.  1.105 simply because of a 
disagreement with the applicant's statement under Sec.  1.55(j) or the 
lack of such a statement.

[[Page 11031]]

    Section 1.55(k) contains the provisions of former Sec.  1.55(b).
    Section 1.55(l) provides that the time periods set forth in Sec.  
1.55 are not extendable. This is not a change from former practice, 
under which the time periods set forth in Sec.  1.55 are not 
extendable. This provision simply avoids the need to separately state 
that a time period is not extendable with respect to each time period 
set forth in Sec.  1.55.
    As it is now more than a decade since the implementation of 
eighteen-month publication in November of 2000, and as the changes in 
this final rule to Sec.  1.55 do not apply to applications filed before 
March 16, 2013, the language in former Sec.  1.55 itself that certain 
time periods therein do not apply to an application filed under 35 
U.S.C. 111(a) before November 29, 2000, or to an international 
application filed under 35 U.S.C. 363 before November 29, 2000, has 
been deleted.
    Section 1.71: Section 1.71(g)(1) is amended to remove reference to 
pre-AIA 35 U.S.C. 103(c)(2)(C) which provided for the names of the 
parties to a joint research agreement in the application for patent and 
is replaced by a reference to the definition of a joint research 
agreement (JRA) as set forth in Sec.  1.9(e) in order to provide for 
both pre-AIA and AIA applications and patents.
    Section 1.76: Sections 1.76(b)(5) and (b)(6) are amended for 
consistency with the changes to and reorganization of Sec. Sec.  1.55 
and 1.78. See discussion of Sec. Sec.  1.55 and 1.78.
    Section 1.77: Section 1.77(b) is amended to provide for any 
statement regarding prior disclosures by the inventor or a joint 
inventor. Section 1.77(a) sets out a preferred arrangement for a patent 
application, and Sec.  1.77(b) sets out a preferred arrangement of the 
specification of a patent application. An applicant is not required to 
use the format specified in Sec.  1.77 or identify in the specification 
any prior disclosures by the inventor or a joint inventor, but 
identifying any prior disclosures by the inventor or a joint inventor 
may save applicants (and the Office) the costs related to an Office 
action and reply, and expedite examination of the application.
    Section 1.77(b)(2) is amended to delete the parenthetical ``(unless 
included in the application data sheet)'' for consistency with Sec.  
1.78(c)(5).
    Section 1.78: Section 1.78 is reorganized as follows: (1) Sec.  
1.78(a) contains provisions relating to claims under 35 U.S.C. 119(e) 
for the benefit of a prior-filed provisional application; (2) Sec.  
1.78(b) contains provisions relating to delayed claims under 35 U.S.C. 
119(e) for the benefit of a prior-filed provisional application; (3) 
Sec.  1.78(c) contains provisions relating to claims under 35 U.S.C. 
120, 121, or 365(c) for the benefit of a prior-filed nonprovisional or 
international application; (4) Sec.  1.78(d) contains provisions 
relating to delayed claims under 35 U.S.C. 120, 121, or 365(c) for the 
benefit of a prior-filed nonprovisional or international application; 
(5) Sec.  1.78(e) contains provisions relating to applications 
containing patentably indistinct claims; (6) Sec.  1.78(f) contains 
provisions relating to applications or patents under reexamination 
naming different inventors and containing patentably indistinct claims; 
and (7) Sec.  1.78(g) provides that the time periods set forth in Sec.  
1.78 are not extendable. In addition, as it is now more than a decade 
since the implementation of eighteen-month publication in November of 
2000, and as the changes in this final rule to Sec.  1.78 do not apply 
to applications filed before March 16, 2013, the language in former 
Sec.  1.78 that certain time periods therein do not apply to an 
application filed under 35 U.S.C. 111(a) before November 29, 2000, or 
to an international application filed under 35 U.S.C. 363 before 
November 29, 2000, has been deleted.
    Section 1.78(a) addresses claims under 35 U.S.C. 119(e) for the 
benefit of one or more prior-filed provisional applications. Section 
1.78(a) contains the provisions of former Sec.  1.78(a)(4) and (a)(5) 
except as otherwise discussed in this final rule.
    Under 35 U.S.C. 119(e)(1), a provisional application must disclose 
the invention claimed in at least one claim of the later-filed 
application in the manner provided by 35 U.S.C. 112(a) (except for the 
requirement to disclose the best mode) for the later-filed application 
to receive the benefit of the filing date of the provisional 
application as to such invention. See New Railhead Mfg., L.L.C. v. 
Vermeer Mfg. Co., 298 F.3d 1290, 1294 (Fed. Cir. 2002) (for a 
nonprovisional application to actually receive the benefit of the 
filing date of the provisional application, ``the specification of the 
provisional [application] must `contain a written description of the 
invention and the manner and process of making and using it, in such 
full, clear, concise, and exact terms,' 35 U.S.C. 112 ] 1, to enable an 
ordinarily skilled artisan to practice the invention claimed in the 
nonprovisional application''). Section 1.78(a), however, does not 
require (as did former Sec.  1.78(a)(4)) that the provisional 
application must disclose the invention claimed in at least one claim 
of the later-filed application in the manner provided by 35 U.S.C. 
112(a) (except for the requirement to disclose the best mode) because 
Sec.  1.78 pertains to claims to the benefit of a prior-filed 
application. The AIA draws a distinction between being entitled to the 
benefit of a prior-filed application and being entitled to claim the 
benefit of a prior-filed application. See 157 Cong. Rec. S1370 (2011) 
(explaining the distinction between being entitled to actual priority 
or benefit for purposes of 35 U.S.C. 100(i) and being entitled only to 
claim priority or benefit for purposes of AIA 35 U.S.C. 102(d)). 
Nevertheless, the prior-filed application must disclose an invention in 
the manner provided by 35 U.S.C. 112(a) (except for the requirement to 
disclose the best mode) for the later-filed application to receive the 
benefit of the filing date of the prior-filed application under 35 
U.S.C. 119(e) (or 35 U.S.C. 120) as to such invention. In contrast, the 
prior-filed application must describe the subject matter for the later-
filed application to be considered effectively filed under AIA 35 
U.S.C. 102(d) on the filing date of the prior-filed application with 
respect to that subject matter.
    Section 1.78(a)(1) provides that a nonprovisional application 
(other than a design application) or international application 
designating the United States of America must be filed not later than 
twelve months after the date on which the provisional application was 
filed, or that the nonprovisional application or international 
application designating the United States of America be entitled to 
claim the benefit under 35 U.S.C. 120, 121, or 365(c) of an application 
that was filed not later than twelve months after the date on which the 
provisional application was filed. Section 1.78(a)(1) also provides 
that this twelve-month period is subject to 35 U.S.C. 21(b) (and Sec.  
1.7(a)). As discussed previously, 35 U.S.C. 21(b) (and Sec.  1.7(a)) 
provide that when the day, or the last day, for taking any action 
(e.g., filing a nonprovisional application within twelve months of the 
date on which the provisional application was filed) or paying any fee 
in the Office falls on Saturday, Sunday, or a Federal holiday within 
the District of Columbia, the action may be taken, or fee paid, on the 
next succeeding secular or business day.
    Section 1.78(a)(2) provides that each prior-filed provisional 
application must name the inventor or a joint inventor named in the 
later--filed application as the inventor or a joint inventor.
    Section 1.78(a)(2) and (c)(2) require the reference to each prior-
filed application to be included in an

[[Page 11032]]

application data sheet. See Changes To Implement the Inventor's Oath or 
Declaration Provisions of the Leahy-Smith America Invents Act, 77 FR at 
48820.
    Section 1.78(a)(6) requires that if a nonprovisional application 
filed on or after March 16, 2013, claims the benefit of the filing date 
of a provisional application filed prior to March 16, 2013, and also 
contains, or contained at any time, a claim to a claimed invention that 
has an effective filing date on or after March 16, 2013, the applicant 
must provide a statement to that effect within the later of four months 
from the actual filing date of the nonprovisional application, four 
months from the date of entry into the national stage as set forth in 
Sec.  1.491 in an international application, sixteen months from the 
filing date of the prior-filed provisional application, or the date 
that a first claim to a claimed invention that has an effective filing 
date on or after March 16, 2013, is presented in the nonprovisional 
application. Section 1.78(a)(6) further provides that an applicant is 
not required to provide such a statement if the applicant reasonably 
believes on the basis of information already known to the individuals 
designated in Sec.  1.56(c) that the nonprovisional application does 
not, and did not at any time, contain a claim to a claimed invention 
that has an effective filing date on or after March 16, 2013.
    This information is needed to assist the Office in determining 
whether the nonprovisional application is subject to AIA 35 U.S.C. 102 
and 103 or pre-AIA 35 U.S.C. 102 and 103. As discussed previously, if 
the Office must determine on its own the effective filing date of every 
claim ever presented in a nonprovisional application filed on or after 
March 16, 2013, that claims priority to or the benefit of a provisional 
application filed prior to March 16, 2013, the time required to examine 
an application will significantly increase. This in turn would result 
in an inefficient examination process that leads to increased 
examination costs, higher patent pendency, and/or reduced patent 
quality. The applicant, on the other hand, should be far more familiar 
with the contents of both the transition application and its priority 
or benefit application(s) than the examiner. Therefore, the Office is 
requiring the applicant, who is in the best position to know the 
effective filing date of each claimed invention, to indicate whether 
application contains, or contained at any time, a claim to a claimed 
invention that has an effective filing date on or after March 16, 2013.
    This provision is tailored to the transition to 35 U.S.C. 102 and 
103 under the AIA. Thus, for a nonprovisional application filed on or 
after March 16, 2013, that claims the benefit of the filing date of a 
provisional application, the applicant would not be required to provide 
any statement if: (1) The nonprovisional application discloses only 
subject matter also disclosed in a provisional application filed prior 
to March 16, 2013; or (2) the nonprovisional application claims only 
the benefit of the filing date of a provisional application filed on or 
after March 16, 2013. Section 1.78(a)(6) also does not require that the 
applicant identify how many or which claims in the nonprovisional 
application have an effective filing date on or after March 16, 2013, 
or that the applicant identify the subject matter in the nonprovisional 
application not also disclosed in the provisional application. Section 
1.78(a)(6) requires only that the applicant state that there is a claim 
in the nonprovisional application that has an effective filing date on 
or after March 16, 2013.
    The Office may issue a requirement for information under Sec.  
1.105 if an applicant takes conflicting positions on whether an 
application contains, or contained at any time, a claim to a claimed 
invention having an effective filing date on or after March 16, 2013. 
For example, the Office may require the applicant to identify where 
there is written description support under 35 U.S.C. 112(a) in the pre-
AIA application for each claim to a claimed invention if an applicant 
provides the statement under Sec.  1.78(a)(6), but later argues that 
the application should have been examined as a pre-AIA application 
because the application does not actually contain a claim to a claimed 
invention having an effective filing date on or after March 16, 2013.
    Section 1.78(b) contains provisions relating to delayed claims 
under 35 U.S.C. 119(e) for the benefit of prior-filed provisional 
applications. Section 1.78(b) contains the provisions of former Sec.  
1.78(a)(6).
    Section 1.78(c) contains provisions relating to claims under 35 
U.S.C. 120, 121, or 365(c) for the benefit of a prior-filed 
nonprovisional or international application designating the United 
States of America. Section 1.78(c)(1) provides that each prior-filed 
application must name the inventor or a joint inventor named in the 
later-filed application as the inventor or a joint inventor. In 
addition, each prior-filed application must either be: (1) An 
international application entitled to a filing date in accordance with 
PCT Article 11 and designating the United States of America; or (2) a 
nonprovisional application under 35 U.S.C. 111(a) that is entitled to a 
filing date as set forth in Sec.  1.53(b) or Sec.  1.53(d) for which 
the basic filing fee set forth in Sec.  1.16 has been paid within the 
pendency of the application (provisions from former Sec.  1.78(a)(1)).
    Section 1.78(c) does not contain a provision (as did former Sec.  
1.78(a)(1)) that the prior-filed application disclose the invention 
claimed in at least one claim of the later-filed application in the 
manner provided by 35 U.S.C. 112(a). For a later-filed application to 
receive the benefit of the filing date of a prior-filed application, 35 
U.S.C. 120 requires that the prior-filed application disclose the 
invention claimed in at least one claim of the later-filed application 
in the manner provided by 35 U.S.C. 112(a) (except for the requirement 
to disclose the best mode). As discussed previously, Sec.  1.78 
pertains to claims to the benefit of a prior-filed application, and the 
AIA draws a distinction between being entitled to the benefit of a 
prior-filed application and being entitled to claim the benefit of a 
prior-filed application.
    Section 1.78(c)(2) is amended to clarify that identifying the 
relationship of the applications means identifying whether the later-
filed application is a continuation, divisional, or continuation-in-
part of the prior-filed nonprovisional application or international 
application. See MPEP section 201.11.
    Section 1.78(c)(3) through (5) contain the provisions of former 
Sec.  1.78(a)(2). Section 1.78(c)(5) also provides that cross-
references to applications for which a benefit is not claimed must not 
be included in an application data sheet (Sec.  1.76(b)(5)). Including 
cross-references to applications for which a benefit is not claimed in 
the application data sheet may lead the Office to inadvertently 
schedule the application for publication under 35 U.S.C. 122(b) and 
Sec.  1.211 et seq. on the basis of the cross-referenced applications 
having the earliest filing date.
    Section 1.78(c)(6) requires that if a nonprovisional application 
filed on or after March 16, 2013, claims the benefit of the filing date 
of a nonprovisional application or an international application 
designating the United States of America filed prior to March 16, 2013, 
and also contains, or contained at any time, a claim to a claimed 
invention that has an effective filing date on or after March 16, 2013, 
the applicant must provide a statement to that effect within the later 
of four months from the actual filing date of the

[[Page 11033]]

later-filed application, four months from the date of entry into the 
national stage as set forth in Sec.  1.491 in an international 
application, sixteen months from the filing date of the prior-filed 
application, or the date that a first claim to a claimed invention that 
has an effective filing date on or after March 16, 2013, is presented 
in the later-filed application. Section 1.78(c)(6) further provides 
that an applicant is not required to provide such a statement if the 
application claims the benefit of a nonprovisional application in which 
a statement under Sec.  1.55(j), Sec.  1.78(a)(6), or Sec.  1.78(c)(6) 
that the application contains, or contained at any time, a claim to a 
claimed invention that has an effective filing date on or after March 
16, 2013, has been filed (as an application that contains, or contained 
at any time, a specific reference under 35 U.S.C. 120, 121, or 365(c) 
to any patent or an application that is subject to AIA 35 U.S.C. 102 
and 103 is itself subject to AIA 35 U.S.C. 102 and 103). Section 
1.78(c)(6) also further provides that an applicant is not required to 
provide such a statement if the applicant reasonably believes on the 
basis of information already known to the individuals designated in 
Sec.  1.56(c) that the later filed application does not, and did not at 
any time, contain a claim to a claimed invention that has an effective 
filing date on or after March 16, 2013.
    This information is needed to assist the Office in determining 
whether the nonprovisional application is subject to AIA 35 U.S.C. 102 
and 103 or pre-AIA 35 U.S.C. 102 and 103. As discussed previously, if 
the Office must determine on its own the effective filing date of every 
claim ever presented in a nonprovisional application filed on or after 
March 16, 2013, that claims priority to or the benefit of a 
nonprovisional application or an international application designating 
the United States of America filed prior to March 16, 2013, the time 
required to examine an application will significantly increase. This in 
turn would result in an inefficient examination process that leads to 
increased examination costs, higher patent pendency, and/or reduced 
patent quality. The applicant, on the other hand, should be far more 
familiar with the contents of both the transition application and its 
priority or benefit application(s) than the examiner. Therefore, the 
Office is requiring the applicant, who is in the best position to know 
the effective filing date of each claimed invention, to indicate 
whether application contains, or contained at any time, a claim to a 
claimed invention that has an effective filing date on or after March 
16, 2013.
    This provision is tailored to the transition to 35 U.S.C. 102 and 
103 under the AIA. Thus, for a nonprovisional application filed on or 
after March 16, 2013, that claims the benefit of the filing date of a 
nonprovisional application or an international application designating 
the United States of America, the applicant would not be required to 
provide any statement if: (1) The nonprovisional application discloses 
only subject matter also disclosed in a prior-filed nonprovisional 
application or international application designating the United States 
of America filed prior to March 16, 2013; or (2) the nonprovisional 
application claims only the benefit of the filing date of a 
nonprovisional application or an international application designating 
the United States of America filed on or after March 16, 2013. Section 
1.78(c)(6) also does not require that the applicant identify how many 
or which claims in the later-filed nonprovisional application have an 
effective filing date on or after March 16, 2013, or that the applicant 
identify the subject matter in the later-filed nonprovisional 
application not also disclosed in the prior-filed nonprovisional 
application or international application designating the United States 
of America. Section 1.78(c)(6) requires only that the applicant state 
that there is a claim in the later-filed nonprovisional application 
that has an effective filing date on or after March 16, 2013.
    The Office may issue a requirement for information under Sec.  
1.105 if an applicant takes conflicting positions on whether a 
nonprovisional application contains, or contained at any time, a claim 
to a claimed invention having an effective filing date on or after 
March 16, 2013. For example, the Office may require the applicant to 
identify where there is written description support under 35 U.S.C. 
112(a) in the pre-AIA application for each claim to a claimed invention 
if an applicant provides the statement under Sec.  1.78(c)(6) but later 
argues that the application should have been examined as a pre-AIA 
application because the application does not actually contain a claim 
to a claimed invention having an effective filing date on or after 
March 16, 2013. The Office would not issue a requirement for 
information under Sec.  1.105 simply because of a disagreement with the 
applicant's statement under Sec.  1.78(c)(6) or the lack of such a 
statement.
    Section 1.78(d) contains provisions relating to delayed claims 
under 35 U.S.C. 120, 121, or 365(c) for the benefit of prior-filed 
nonprovisional or international applications. Section 1.78(d) contains 
the provisions of former Sec.  1.78(a)(3).
    Section 1.78(e) contains the provisions of former Sec.  1.78(b) 
pertaining to applications containing ``conflicting'' claims. Section 
1.78(e), however, uses the term ``patentably indistinct'' rather than 
``conflicting'' for clarity as the term ``conflicting'' is not 
otherwise employed in the rules of practice. See Changes To Implement 
Derivation Proceedings, 77 FR at 56070, 56071-72, and 56090 (adding new 
Sec.  42.401, which includes defining same or substantially the same as 
meaning patentably indistinct).
    Section 1.78(f) addresses applications or patents under 
reexamination that name different inventors and contain patentably 
indistinct claims. The provisions are similar to the provisions of 
former Sec.  1.78(c), but the language has been amended to refer to 
``on its effective filing date (as defined in Sec.  1.109) or on its 
date of invention, as applicable'' in place of ``at the time the later 
invention was made'' to provide for both AIA applications (under the 
``first inventor to file'' system) and pre-AIA applications. Section 
1.78(f) likewise uses the term ``patentably indistinct'' rather than 
``conflicting'' for clarity.
    Section 1.78(g) provides that the time periods set forth in Sec.  
1.78 are not extendable.
    Section 1.84: Section 1.84(a) is amended to eliminate the 
provisions pertaining to statutory invention registrations. See 
discussion of the provisions of Sec. Sec.  1.293 through 1.297.
    Section 1.103: Section 1.103(g) is removed to eliminate the 
provisions pertaining to statutory invention registrations. See 
discussion of the provisions of Sec. Sec.  1.293 through 1.297.
    Section 1.104: Section 1.104(c)(4) is amended to include the 
provisions that pertain to commonly owned or joint research agreement 
subject matter for applications and patents subject to AIA 35 U.S.C. 
102 and 103. Specifically, Sec.  1.104(c)(4) implements the provisions 
of 35 U.S.C. 102(b)(2)(C) and 35 U.S.C. 102(c) in the AIA. Thus, Sec.  
1.104(c)(4) is applicable to applications and patents that are subject 
to AIA 35 U.S.C. 102 and 103.
    Section 1.104(c)(4)(i) provides that subject matter which would 
otherwise qualify as prior art under AIA 35 U.S.C. 102(a)(2) and a 
claimed invention will be treated as commonly owned for purposes of AIA 
35 U.S.C. 102(b)(2)(C) if the applicant or patent owner provides a 
statement to the effect that the subject matter and the claimed 
invention, not later than the effective

[[Page 11034]]

filing date of the claimed invention, were owned by the same person or 
subject to an obligation of assignment to the same person.
    Section 1.104(c)(4)(ii) addresses joint research agreements and 
provides that subject matter which would otherwise qualify as prior art 
under AIA 35 U.S.C. 102(a)(2) and a claimed invention will be treated 
as commonly owned for purposes of AIA 35 U.S.C. 102(b)(2)(C) on the 
basis of a joint research agreement under AIA 35 U.S.C. 102(c) if: (1) 
The applicant or patent owner provides a statement to the effect that 
the subject matter was developed and the claimed invention was made by 
or on behalf of one or more parties to a joint research agreement, 
within the meaning of 35 U.S.C. 100(h) and Sec.  1.9(e), that was in 
effect on or before the effective filing date of the claimed invention, 
and the claimed invention was made as a result of activities undertaken 
within the scope of the joint research agreement; and (2) the 
application for patent for the claimed invention discloses or is 
amended to disclose the names of the parties to the joint research 
agreement.
    Section 1.104(c)(5) is amended to include the provisions that 
pertain to commonly owned or joint research agreement subject matter 
for applications and patents subject to 35 U.S.C. 102 and 103 in effect 
prior to the effective date of section 3 of the AIA. Thus, Sec.  
1.104(c)(5) is applicable to applications and patents that are subject 
to 35 U.S.C. 102 and 103 in effect prior to March 16, 2013.
    Section 1.104(c)(5)(i) provides that subject matter which qualifies 
as prior art under 35 U.S.C. 102(e), (f), or (g) in effect prior to 
March 16, 2013, and a claimed invention in an application filed on or 
after November 29, 1999, or any patent issuing thereon, in an 
application filed before November 29, 1999, but pending on December 10, 
2004, or any patent issuing thereon, or in any patent granted on or 
after December 10, 2004, will be treated as commonly owned for purposes 
of 35 U.S.C. 103(c) in effect prior to March 16, 2013, if the applicant 
or patent owner provides a statement to the effect that the subject 
matter and the claimed invention, at the time the claimed invention was 
made, were owned by the same person or subject to an obligation of 
assignment to the same person.
    Section 1.104(c)(5)(ii) addresses joint research agreements and 
provides that subject matter which qualifies as prior art under 35 
U.S.C. 102(e), (f), or (g) in effect prior to March 16, 2013, and a 
claimed invention in an application pending on or after December 10, 
2004, or in any patent granted on or after December 10, 2004, will be 
treated as commonly owned for purposes of 35 U.S.C. 103(c) in effect 
prior to March 16, 2013, on the basis of a joint research agreement 
under 35 U.S.C. 103(c)(2) in effect prior to March 16, 2013, if: (1) 
The applicant or patent owner provides a statement to the effect that 
the subject matter and the claimed invention were made by or on behalf 
of the parties to a joint research agreement, within the meaning of 35 
U.S.C. 100(h) and Sec.  1.9(e), which was in effect on or before the 
date the claimed invention was made, and that the claimed invention was 
made as a result of activities undertaken within the scope of the joint 
research agreement; and (2) the application for patent for the claimed 
invention discloses or is amended to disclose the names of the parties 
to the joint research agreement. Sections 1.104(c)(4)(ii) and 
1.104(c)(5)(ii) make reference to the definition of joint research 
agreement contained in 35 U.S.C. 100(h) and Sec.  1.9(e). The AIA did 
not change the definition of a joint research agreement, but merely 
moved the definition from 35 U.S.C. 103(c)(3) to 35 U.S.C. 100(h). 
Thus, the Office is referencing the definition of joint research 
agreement in 35 U.S.C. 100(h) in Sec.  1.104(c)(4)(ii) and (c)(5)(ii) 
for simplicity.
    Section 1.104(c)(6) is added to clarify that patents issued prior 
to December 10, 2004, from applications filed prior to November 29, 
1999, are subject to 35 U.S.C. 103(c) in effect on November 28, 1999. 
See MPEP Sec.  706.02(l).
    The provisions of former Sec.  1.104(c)(5) pertain to statutory 
invention registrations and are thus removed. See discussion of the 
provisions of Sec. Sec.  1.293 through 1.297.
    Section 1.109: Section 1.109 is added to specify the effective 
filing date of a claimed invention under the AIA. Section 1.109(a) 
provides that the effective filing date of a claimed invention in a 
patent or an application for patent, other than in a reissue 
application or reissued patent, is the earliest of: (1) The actual 
filing date of the patent or the application for the patent containing 
a claim to the invention; or (2) the filing date of the earliest 
application for which the patent or application is entitled, as to such 
invention, to a right of priority or the benefit of an earlier filing 
date under 35 U.S.C. 119, 120, 121, or 365. See 35 U.S.C. 100(i)(1). 
Section 1.109(b) provides that the effective filing date for a claimed 
invention in a reissue application or a reissued patent is determined 
by deeming the claim to the invention to have been contained in the 
patent for which reissue was sought. See 35 U.S.C. 100(i)(2).
    Section 1.109 applies to any application for patent, and to any 
patent issuing thereon, that contains, or contained at any time, a 
claim to a claimed invention that has an effective filing date as 
defined in 35 U.S.C. 100(i) that is on or after March 16, 2013, and to 
any application for patent, and to any patent issuing thereon, that 
contains, or contained at any time, a specific reference under 35 
U.S.C. 120, 121, or 365(c) to any patent or application that contains, 
or contained at any time, a claim to a claimed invention that has an 
effective filing date as defined in 35 U.S.C. 100(i) that is on or 
after March 16, 2013.
    Section 1.110: Section 1.110 is revised to provide for both AIA 
applications and pre-AIA applications. Section 1.110 specifically 
provides that when one or more joint inventors are named in an 
application or patent, the Office may require an applicant or patentee 
to identify the inventorship and ownership or obligation to assign 
ownership, of each claimed invention on its effective filing date (as 
defined in Sec.  1.109) or on its date of invention, as applicable, 
when necessary for purposes of an Office proceeding. Section 1.110 is 
amended to change the ownership inquiry to ownership: (1) On its 
effective filing date (as defined in Sec.  1.109), which would be 
applicable to AIA applications; or (2) on its date of invention, which 
would be applicable to pre-AIA applications. Section 1.110 further 
provides that the Office may also require an applicant or patentee to 
identify the invention dates of the subject matter of each claim when 
necessary for purposes of an Office proceeding, which would be 
applicable to pre-AIA applications.
    Section 1.130: Section 1.130 is amended to implement the exceptions 
provided under AIA 35 U.S.C. 102(b) by replacing its existing 
provisions (which are relocated to Sec.  1.131) with provisions for: 
(1) Disqualifying a disclosure as prior art by establishing that the 
disclosure was by the inventor or a joint inventor or is a disclosure 
of the inventor's or a joint inventor's own work (affidavit or 
declaration of attribution); and (2) disqualifying a disclosure as 
prior art by establishing that there was a prior public disclosure of 
the subject matter disclosed by the inventor or a joint inventor or 
that there was a prior public disclosure by another of the inventor's 
or a joint inventor's own work (affidavit or declaration of prior 
public disclosure). Thus, Sec.  1.130 applies to applications for 
patent (and patents issuing thereon) that are subject

[[Page 11035]]

to AIA 35 U.S.C. 102 and 103, and Sec.  1.131 would apply to 
applications for patent (and patents issuing thereon) that are subject 
to pre-AIA 35 U.S.C. 102 and 103 (35 U.S.C. 102 and 103 as in effect on 
March 15, 2013, prior to the effective date of section 3 of the AIA). 
In an application for patent to which the provisions of Sec.  1.130 
apply, and to any patent issuing thereon, the provisions of Sec.  1.131 
are applicable only with respect to a rejection under 35 U.S.C. 102(g) 
as in effect on March 15, 2013.
    Section 1.130 provides a mechanism for filing an affidavit or 
declaration to establish that a disclosure is not prior art in 
accordance with AIA 35 U.S.C. 102(b). Section 1.130, like Sec. Sec.  
1.131 and 1.132, provides a mechanism for the submission of evidence to 
disqualify a disclosure as prior art or otherwise traverse a rejection. 
An applicant's or patent owner's compliance with Sec.  1.130 means that 
the applicant or patent owner is entitled to have the evidence 
considered in determining the patentability of the claim(s) at issue. 
It does not mean that the applicant or patent owner is entitled as a 
matter of right to have the rejection of or objection to the claim(s) 
withdrawn. See Changes To Implement the Patent Business Goals, 65 FR 
54604, 54640 (Sept. 8, 2000) (discussing procedural nature of 
Sec. Sec.  1.131 and 1.132). The examination guidelines will discuss 
the standard for evaluating the sufficiency of an affidavit or 
declaration attributing the disclosure or subject matter disclosed as 
the inventor's or a joint inventor's own work and the sufficiency of an 
affidavit or declaration of a prior public disclosure of the subject 
matter disclosed as the inventor's or a joint inventor's own work.
    Section 1.130(a) provides that when any claim of an application or 
a patent under reexamination is rejected, the applicant or patent owner 
may submit an appropriate affidavit or declaration to disqualify a 
disclosure as prior art by establishing that the disclosure was made by 
the inventor or a joint inventor, or the subject matter disclosed was 
obtained directly or indirectly from the inventor or a joint inventor. 
Section 1.130(a) pertains to the provisions of subparagraph (A) of AIA 
35 U.S.C. 102(b)(1) and (b)(2). AIA 35 U.S.C. 102(b)(1)(A) provides 
that a disclosure made one year or less before the effective filing 
date of a claimed invention shall not be prior art to the claimed 
invention under AIA 35 U.S.C. 102(a)(1) if the disclosure was made by 
the inventor or joint inventor or by another who obtained the subject 
matter disclosed directly or indirectly from the inventor or a joint 
inventor, and AIA 35 U.S.C. 102(b)(2)(A) provides that a disclosure 
shall not be prior art to a claimed invention under AIA 35 U.S.C. 
102(a)(2) if the subject matter disclosed was obtained directly or 
indirectly from the inventor or a joint inventor. In these situations, 
the applicant or patent owner is attempting to show that: (1) The 
disclosure was made by the inventor or a joint inventor; or (2) the 
subject matter disclosed was obtained directly or indirectly from the 
inventor or a joint inventor.
    Affidavits or declarations seeking to attribute an activity, a 
reference, or part of a reference to the applicant to show that the 
activity or reference is not available as prior art under pre-AIA 35 
U.S.C. 102(a) have been treated as affidavits or declarations under 
Sec.  1.132. See MPEP Sec.  716.10. Affidavits or declarations of 
attribution in pre-AIA applications remain as affidavits or 
declarations under Sec.  1.132. Thus, the Office will treat affidavits 
or declarations of attribution in AIA applications as affidavits or 
declarations under Sec.  1.130, and affidavits or declarations of 
attribution in pre-AIA applications as affidavits or declarations under 
Sec.  1.132, regardless of whether the affidavit or declaration is 
designated as an affidavit or declaration under Sec. Sec.  1.130, 
1.131, or 1.132.
    Section 1.130(b) provides that when any claim of an application or 
a patent under reexamination is rejected, the applicant or patent owner 
may submit an appropriate affidavit or declaration to disqualify a 
disclosure as prior art by establishing that the subject matter 
disclosed had, before such disclosure was made or before such subject 
matter was effectively filed, been publicly disclosed by the inventor 
or a joint inventor or another who obtained the subject matter 
disclosed directly or indirectly from the inventor or a joint inventor. 
Section 1.130(b) pertains to the provisions of subparagraph (B) of AIA 
35 U.S.C. 102(b)(1) and (b)(2). AIA 35 U.S.C. 102(b)(1)(B) provides 
that a disclosure made one year or less before the effective filing 
date of a claimed invention shall not be prior art to the claimed 
invention under AIA 35 U.S.C. 102(a)(1) if the subject matter disclosed 
had, before such disclosure, been publicly disclosed by the inventor or 
a joint inventor or another who obtained the subject matter disclosed 
directly or indirectly from the inventor or a joint inventor. AIA 35 
U.S.C. 102(b)(2)(B) provides that a disclosure shall not be prior art 
to a claimed invention under AIA 35 U.S.C. 102(a)(2) if the subject 
matter disclosed had, before such subject matter was effectively filed 
under AIA 35 U.S.C. 102(a)(2), been publicly disclosed by the inventor 
or a joint inventor or another who obtained the subject matter 
disclosed directly or indirectly from the inventor or a joint inventor. 
In these situations, the disclosure on which the rejection is based is 
not by the inventor or a joint inventor, or by another who obtained the 
subject matter disclosed directly or indirectly from the inventor or a 
joint inventor, and the applicant or patent owner is attempting to show 
that the subject matter disclosed had, before such disclosure was made 
or before such subject matter was effectively filed, been publicly 
disclosed by: (1) The inventor or a joint inventor; or (2) another who 
obtained the subject matter disclosed directly or indirectly from the 
inventor or a joint inventor. As pointed out in the examination 
guidelines, in response to public comments, the Office is clarifying 
that there is no requirement that the mode of disclosure by an inventor 
or joint inventor be the same as the mode of disclosure of an 
intervening disclosure (e.g., inventor discloses his invention at a 
trade show and the intervening disclosure is in a peer-reviewed 
journal). Additionally, there is no requirement that the disclosure by 
the inventor or a joint inventor be a verbatim or ipsissimis verbis 
disclosure of an intervening disclosure in order for the exception 
based on a previous public disclosure of subject matter by the inventor 
or a joint inventor to apply. The examination guidelines also clarify 
that the exception applies to subject matter of the intervening 
disclosure that is simply a more general description of the subject 
matter previously publicly disclosed by the inventor or a joint 
inventor.
    Section 1.130(b) further provides that an affidavit or declaration 
under Sec.  1.130(b) must identify the subject matter publicly 
disclosed and provide the date of the public disclosure of such subject 
matter by the inventor or a joint inventor or another who obtained the 
subject matter disclosed directly or indirectly from the inventor or a 
joint inventor. Section 1.130(b)(1) provides that if the subject matter 
publicly disclosed on the earlier date by the inventor or a joint 
inventor, or by another who obtained the subject matter disclosed 
directly or indirectly from the inventor or a joint inventor, was in a 
printed publication, the affidavit or declaration must be accompanied 
by a copy of the printed publication. Section 1.130(b)(2) provides that 
if the subject matter publicly disclosed on the earlier date was not in 
a printed publication, the affidavit or declaration must describe the 
subject matter with

[[Page 11036]]

sufficient detail and particularity to determine what subject matter 
had been publicly disclosed on the earlier date by the inventor or a 
joint inventor or another who obtained the subject matter disclosed 
directly or indirectly from the inventor or a joint inventor. The 
Office needs these details to determine not only whether the inventor 
is entitled to disqualify the disclosure under AIA 35 U.S.C. 102(b), 
but also because if the rejection is based on a U.S. patent application 
publication or WIPO publication of an international application to 
another and such application is also pending before the Office, this 
prior disclosure may be prior art under AIA 35 U.S.C. 102(a) to the 
other earlier filed application, and the Office may need this 
information to avoid granting two patents on the same invention.
    Section 1.130 does not contain a provision that ``[o]riginal 
exhibits of drawings or records, or photocopies thereof, must accompany 
and form part of the affidavit or declaration or their absence must be 
satisfactorily explained'' in contrast to the requirement for such 
exhibits in Sec.  1.131(b), because in some situations an affidavit or 
declaration under Sec.  1.130 does not necessarily need to be 
accompanied by such exhibits (e.g., a statement by the inventor or a 
joint inventor may be sufficient). However, in situations where 
evidence is required, such exhibits must accompany an affidavit or 
declaration under Sec.  1.130. In addition, an affidavit or declaration 
under Sec.  1.130 must be accompanied by any exhibits that the 
applicant or patent owner wishes to rely upon.
    Section 1.130(c) provides that the provisions of Sec.  1.130 are 
not available if the rejection is based upon a disclosure made more 
than one year before the effective filing date of the claimed 
invention. A disclosure made more than one year before the effective 
filing date of the claimed invention is prior art under AIA 35 U.S.C. 
102(a)(1), and may not be disqualified under AIA 35 U.S.C. 102(b)(1). 
Note that the provisions of Sec.  1.130 are available to establish that 
a rejection under AIA 35 U.S.C. 102(a)(2) is based on an application or 
patent that was effectively filed more than one year before the 
effective filing date of the claimed invention under examination, but 
not publicly disclosed more than one year before such effective filing 
date, where the subject matter disclosed was obtained directly or 
indirectly from the inventor or a joint inventor.
    Section 1.130(c) also provides that the provisions of Sec.  1.130 
may not be available if the rejection is based upon a U.S. patent or 
U.S. patent application publication of a patented or pending 
application naming another inventor, the patent or pending application 
claims an invention that is the same or substantially the same as the 
applicant's or patent owner's claimed invention, and the affidavit or 
declaration contends that an inventor named in the U.S. patent or U.S. 
patent application publication derived the claimed invention from the 
inventor or a joint inventor named in the application or patent, in 
which case an applicant or patent owner may file a petition for a 
derivation proceeding pursuant to Sec.  42.401 et seq. of this title. 
Permitting two different applicants to each aver or declare that an 
inventor named in the other application derived the claimed invention 
without a derivation proceeding to resolve who the true inventor is 
could result in the Office issuing two patents containing patentably 
indistinct claims to two different parties. Thus, the Office needs to 
provide that the provisions of Sec.  1.130 are not available in certain 
situations to avoid the issuance of two patents containing patentably 
indistinct claims to two different parties. See In re Deckler, 977 F.2d 
1449, 1451-52 (Fed. Cir. 1992) (35 U.S.C. 102, 103, and 135 ``clearly 
contemplate--where different inventive entities are concerned--that 
only one patent should issue for inventions which are either identical 
to or not patentably distinct from each other'') (quoting Aelony v. 
Arni, 547 F.2d 566, 570 (CCPA 1977)). The provisions of Sec.  1.130, 
however, would be available if: (1) The rejection is based upon a 
disclosure other than a U.S. patent or U.S. patent application 
publication (such as nonpatent literature or a foreign patent 
document); (2) the rejection is based upon a U.S. patent or U.S. patent 
application and the patent or pending application did not claim an 
invention that is the same or substantially the same as the applicant's 
claimed invention; or (3) the rejection is based upon a U.S. patent or 
U.S. patent application and the patent or pending application that does 
claim an invention that is the same or substantially the same as the 
applicant's claimed invention, but the affidavit or declaration under 
Sec.  1.130 does not contend that an inventor named in the U.S. patent 
or U.S. patent application publication derived the claimed invention 
from the inventor or a joint inventor named in the application or 
patent (e.g., the affidavit or declaration under Sec.  1.130 contends 
that the subject matter disclosed had, before such disclosure was made 
or before such subject matter was effectively filed, been publicly 
disclosed by the inventor or a joint inventor).
    Section 1.130(d) provides that the provisions of Sec.  1.130 apply 
to any application for patent, and to any patent issuing thereon, that 
is subject to AIA 35 U.S.C. 102 and 103.
    Section 1.131: The title of Sec.  1.131 is amended to include the 
provisions of former Sec.  1.130.
    Section 1.131(a) is amended to refer to a party qualified under 
Sec.  1.42 or Sec.  1.46 for consistency with the changes to Sec.  1.42 
et seq. See Changes To Implement the Inventor's Oath or Declaration 
Provisions of the Leahy-Smith America Invents Act, 77 FR at 48778-79. 
Section 1.131(a) is amended to refer to pre-AIA 35 U.S.C. 102(e) as 35 
U.S.C. 102(e) as in effect on March 15, 2013. Section 1.131(a)(1) is 
amended to refer to an ``application naming another inventor which 
claims interfering subject matter as defined in Sec.  41.203(a)'' 
rather than an ``application to another or others which claims the same 
patentable invention as defined in Sec.  41.203(a)'' in view of the 
changes to 35 U.S.C. 102 in the AIA and the current provisions of Sec.  
41.203(a).
    Section 1.131(b) is amended to provide that the showing of facts 
provided for in Sec.  1.131(b) is applicable to an oath or declaration 
under Sec.  1.131(a).
    Section 1.131(c) is added to include the provisions of former Sec.  
1.130, but is revised to refer to 35 U.S.C. 103 as 35 U.S.C. 103 as in 
effect on March 15, 2013, to refer to pre-AIA 35 U.S.C. 102(b) as 35 
U.S.C. 102(b) as in effect on March 15, 2013, and to refer to 35 U.S.C. 
104 as 35 U.S.C. 104 as in effect on March 15, 2013.
    Section 1.131(d) is added to provide that the provisions of Sec.  
1.131 apply to any application for patent, and to any patent issuing 
thereon, that contains, or contained at any time: (1) A claim to an 
invention that has an effective filing date as defined in 35 U.S.C. 
100(i) that is before March 16, 2013; or (2) a specific reference under 
35 U.S.C. 120, 121, or 365(c) to any patent or application that 
contains, or contained at any time, a claim to an invention that has an 
effective filing date as defined in 35 U.S.C. 100(i) that is before 
March 16, 2013.
    Section 1.131(e) is added to provide that, in an application for 
patent to which the provisions of Sec.  1.130 apply, and to any patent 
issuing thereon, the provisions of Sec.  1.131 are applicable only with 
respect to a rejection under 35 U.S.C. 102(g) as in effect on March 15, 
2013. Section 1.130(d) provides that the provisions of Sec.  1.130 
apply to applications for patent, and to any patent issuing thereon, 
that is subject to

[[Page 11037]]

AIA 35 U.S.C. 102 and 103. The date of invention is not relevant under 
AIA 35 U.S.C. 102 and 103. Thus, in an application for patent to which 
the provisions of Sec.  1.130 apply, and to any patent issuing thereon, 
a prior art disclosure could not be antedated under AIA 35 U.S.C. 102 
and 103 by way of an affidavit or declaration under Sec.  1.131(a) 
showing that the inventor previously invented the claimed subject 
matter.
    Sections 1.293 through 1.297: The AIA repeals the provisions of 35 
U.S.C. 157 pertaining to statutory invention registrations. Thus, the 
statutory invention registration provisions of Sec. Sec.  1.293 through 
1.297 are removed.
    Section 1.321: Section 1.321(d) is amended to remove reference to 
35 U.S.C. 103(c) and to provide a reference to the provisions of Sec.  
1.104(c)(4)(ii) and Sec.  1.104(c)(5)(ii) in order provide for both AIA 
and pre-AIA applications.

Comments and Responses to Comments

    As discussed previously, the Office published a notice of proposed 
rulemaking and a notice of proposed examination guidelines on July 26, 
2012, to implement the first inventor to file provisions of section 3 
of the AIA, and conducted a roundtable on September 6, 2012, to obtain 
public input from organizations and individuals on issues relating to 
the Office's proposed implementation of the first inventor to file 
provisions of the AIA. See Changes To Implement the First Inventor To 
File Provisions of the Leahy-Smith America Invents Act, 77 FR at 43742-
59, Examination Guidelines for Implementing the First Inventor To File 
Provisions of the Leahy-Smith America Invents Act, 77 FR at 43759-73, 
and Notice of Roundtable on the Implementation of the First Inventor To 
File Provisions of the Leahy-Smith America Invents Act, 77 FR at 49427-
28. The Office received approximately seventy written comments (from 
intellectual property organizations, industry, law firms, individual 
patent practitioners, and the general public) in response to these 
notices. The comments germane to the proposed changes to the rules of 
practice and the Office's responses to the comments follow.

A. Foreign Priority Claim and Certified Copy

    Comment 1: Numerous comments either opposed or suggested revising 
the requirement for submission of a certified copy of the foreign 
priority document within the later of four months from the actual 
filing date of the application or sixteen months from the filing of the 
prior foreign application as set forth in proposed Sec.  1.55. The 
majority of these comments stated that such filing deadlines for the 
certified copy are unrealistic because many delays can be beyond the 
control of the applicant, such as delays by the foreign intellectual 
property office, mailing and courier delays, and even delays by the 
Office in requesting delivery under the priority document exchange 
program. One comment suggested revising the timing requirement for 
filing the certified copy of the foreign priority document to no later 
than payment of the issue fee.
    Response: Section 1.55(f) as adopted in this final rule requires 
that a certified copy of the foreign application must be filed within 
the later of four months from the actual filing date of the application 
or sixteen months from the filing date of the prior foreign 
application. Section 1.55(f) as adopted in this final rule, however, 
also provides that this requirement does not apply if: (1) The priority 
application was filed in a participating foreign intellectual property 
office, or if a copy of the foreign application was filed in an 
application subsequently filed in a participating foreign intellectual 
property office that permits the Office to obtain such a copy, and the 
Office receives either a copy of the foreign application from the 
participating foreign intellectual property office or a certified copy 
of the foreign application within the pendency of the application and 
before the patent is granted; or (2) the applicant provides an interim 
copy of the original foreign application within the later of four 
months from the actual filing date of the application or sixteen months 
from the filing date of the prior foreign application, and files a 
certified copy of the foreign application within the pendency of the 
application and before issuance of the patent.
    Comment 2: Several comments asserted that there is no need for a 
certified copy of the foreign priority application because the Office 
can readily obtain priority documents through its exchange mechanisms 
(e.g., Digital Access Service (DAS) and Priority Document Exchange 
(PDX)) with other intellectual property offices. The comments suggested 
that the Office revise proposed Sec.  1.55 to specifically exempt the 
time period for filing the certified copy of the priority document if 
the applicant has timely requested a certified copy or electronic 
transfer of that copy. One comment suggested that in such 
circumstances, the rule should not include the requirement for actual 
receipt of the foreign application by the Office.
    Response: Section 1.55(h) as adopted in this final rule provides an 
exception for filing a certified copy of the foreign priority 
application when the priority application was filed in a participating 
foreign intellectual property office, or if a copy of the foreign 
application was filed in an application subsequently filed in a 
participating foreign intellectual property office that permits the 
Office to obtain such a copy, and the Office receives a copy of the 
foreign application from the participating foreign intellectual 
property office within the pendency of the application and before the 
patent is granted. Otherwise, the Office continues to require a 
certified copy of a foreign priority application pursuant to its 
authority in 35 U.S.C. 119(b). The requirement for a certified copy 
where a copy was not received from a participating intellectual 
property office is necessary to ensure that a true copy of the earlier 
filed application is of record before the patent is granted. The Office 
needs a copy of the foreign priority application for situations in 
which a U.S. patent or U.S. patent application publication has a prior 
art effect as of the filing date of a foreign priority application.
    Comment 3: One comment noted that the electronic transmittal of 
priority documents by participating foreign intellectual property 
offices is not always available as an alternative to submitting a 
certified paper copy of the priority application, and further observed 
that several large patent offices (e.g., the German Patent and Trade 
Mark Office (DPMA)) do not participate in electronic priority document 
exchange programs with the Office.
    Response: Section 1.55(i) as adopted in this final rule permits an 
applicant to provide an ``interim copy'' of the original foreign 
application from the applicant's own records to provide for the 
situation in which the applicant cannot obtain a certified copy of the 
foreign application within the time limit set forth in Sec.  1.55(f). 
While providing an interim copy of a foreign application under Sec.  
1.55(i) satisfies the requirement for a certified copy of the foreign 
application to be filed within the time limit set forth in Sec.  
1.55(f), a certified copy of the foreign application ultimately must 
still be filed before a patent is granted as set forth in Sec.  
1.55(g).
    Furthermore, Sec.  1.55(h)(4) as adopted in this final rule 
provides that, under specified conditions, if the foreign application 
was not filed in a participating foreign intellectual property office, 
the applicant can file a request in a separate document that the Office 
obtain a copy of the foreign

[[Page 11038]]

application from a participating intellectual property office that 
permits the Office to obtain such a copy. Applicants can use Form PTO/
SB/38 (Request to Retrieve Electronic Priority Application(s)) to file 
such a request. If the Office receives a copy of the foreign 
application from the participating foreign intellectual property office 
within the pendency of the application and before the patent is 
granted, the applicant need not file a certified paper copy of the 
foreign application. As a specific example, an application filed in the 
DPMA (which is not currently a participating foreign intellectual 
property office) may be retrieved via the priority document exchange 
program if it is identified in the claim for priority on the 
application data sheet, a subsequent application filed in the European 
Patent Office (EPO) or the Japan Patent Office (JPO) contains a 
certified copy of the DPMA application, and the applicant timely files 
a separate request for the Office to obtain from the EPO (or JPO) a 
copy of the certified copy of the DPMA application, wherein the request 
identifies the DPMA application and the subsequent application by their 
application number, country (EPO, JPO, or DE), day, month, and year of 
their filing.
    Comment 4: Several comments suggested that where a priority 
application was published and available to the public by the time of 
publication of the U.S. application there is no need for a certified 
copy of the foreign application for the purpose of establishing an 
earlier effective prior art date under AIA 35 U.S.C. 102(d). One 
comment suggested that the Office waive the certified copy requirement 
for foreign priority applications filed in foreign intellectual 
property offices that publish at eighteen months. One comment argued 
that the requirement for the certified copy of the foreign priority 
document is obsolete because a certified copy is not required by 
statute. Another comment asserted that the filing of the certified copy 
of the foreign application is burdensome, costly, and not required 
unless an applicant relies on the foreign priority date to eliminate a 
prior art rejection.
    Response: AIA 35 U.S.C. 102(d) provides that for purposes of 
determining whether a patent or application for patent is prior art to 
a claimed invention under AIA 35 U.S.C. 102(a)(2), the patent or 
application shall be considered to have been effectively filed, with 
respect to any subject matter described in the patent or application, 
as of the earliest of the actual filing date of the patent or the 
application for patent, or the filing date of the earliest application 
for which the patent or application for patent is entitled to claim a 
right of priority under 35 U.S.C. 119, 365(a), or 365(b), or to claim 
the benefit of an earlier filing date under 35 U.S.C. 120, 121, or 
365(c), that describes the subject matter. It is thus necessary for a 
copy of any foreign application to which a patent or application for 
patent claims a right of priority under 35 U.S.C. 119 or 365(a) to be 
available for review in order to determine the date that the patent or 
application for patent was effectively filed with respect to subject 
matter described in the patent or application for patent. The 
requirement in Sec.  1.55 for a certified copy of the foreign 
application is specifically authorized by 35 U.S.C. 119(b) and is 
consistent with international requirements (see, e.g., PCT Rule 17).
    Comment 5: Several comments requested that a provision be added to 
proposed Sec.  1.55 to allow for late submission of the certified copy 
of the foreign priority application. One comment observed that if a 
remedy for late submission of the certified copy is provided for in the 
rule, an applicant would not need to file a petition for waiver of the 
applicable rule for late filing of the certified copy of the foreign 
application that is due to actions beyond the control of the applicant. 
The comment further suggested that the Office consider following the 
approach set forth in PCT Rule 17.1 to address delays attributable to 
the actions of the patent offices.
    Response: Section 1.55(f) as adopted in this final rule provides 
for the belated filing of a certified copy of the foreign application. 
Section 1.55(f) specifically provides that a certified copy of the 
foreign application filed after the time period set forth therein must 
be accompanied by a petition including a showing of good and sufficient 
cause for the delay and the petition fee set forth in Sec.  1.17(g). As 
compared to a petition to seek the suspension or waiver under Sec.  
1.183 of the requirement to submit a certified copy of the foreign 
application within the specified time frame, Sec.  1.55(f) provides a 
lower standard (good and sufficient cause versus an extraordinary 
situation) and fee ($200 petition fee set forth in Sec.  1.17(g) versus 
the $400 petition fee set forth in Sec.  1.17(f)).
    Comment 6: Several comments questioned whether an applicant is 
required to repeatedly check to see if the Office has received a copy 
of the foreign application under the priority document exchange 
program. Two comments questioned whether the Office will mail a notice 
setting a due date for compliance to file the certified copy of the 
foreign application.
    Response: The Office will not send a notice setting a time period 
for filing a certified copy of the priority document. Upon receipt of a 
Notice of Allowance, applicants should check to see whether the Office 
has received a copy of the foreign application under the priority 
document exchange program. To be entitled to priority, the Office must 
receive a copy of the foreign application from the participating 
foreign intellectual property office within the pendency of the 
application and before the patent is granted, or receive a certified 
copy of the foreign application within that time period. If a certified 
copy of the foreign application is filed after the date the issue fee 
is paid, it must be accompanied by the processing fee set forth in 
Sec.  1.17(i), but the patent will not include the priority claim 
unless corrected by a certificate of correction under 35 U.S.C. 255 and 
Sec.  1.323.
    Comment 7: One comment noted that the Office automatically 
retrieves foreign applications from participating foreign intellectual 
property offices and questioned whether this practice will continue or 
whether an applicant must file a separate document requesting that the 
Office retrieve a copy of the foreign application. One comment 
suggested modifying proposed Sec.  1.55(d)(2) to indicate that if the 
foreign application was not filed in a participating foreign 
intellectual property office, the request that the Office obtain a copy 
of the foreign application from a participating intellectual property 
office may be provided in an application data sheet instead of a 
separate request.
    Response: The Office is continuing the practice of treating a 
priority claim to an application filed in a participating foreign 
intellectual property office as a request that the Office obtain a copy 
of the foreign application from the participating intellectual property 
office. A separate written request may be used when the applicant 
wishes the Office to retrieve a foreign application from a foreign 
intellectual property office that becomes a participating foreign 
intellectual property office after the foreign priority has been 
claimed, so long as the time period set in Sec.  1.55(f) has not 
expired. A separate written request is required in the situation where 
the foreign application is not originally filed in a participating 
office, but a certified copy of the foreign application was filed in an 
application subsequently filed in a participating foreign intellectual 
property office. The suggestion to include the request that the Office 
obtain a copy of the foreign application from the participating 
intellectual property office in the

[[Page 11039]]

application data sheet is not adopted in this final rule. Including 
information regarding the subsequent application for which priority is 
not claimed in an application data sheet, instead of in a separate 
request, could lead to incorrect processing of the subsequent 
application as the foreign priority document.
    Comment 8: One comment asserted that the late filing of a certified 
copy of a priority document due to circumstances beyond the control of 
the applicant should not result in a reduction of patent term 
adjustment.
    Response: There are no provisions in the patent term adjustment 
regulations (i.e., Sec. Sec.  1.702 et seq.) for a reduction of patent 
term adjustment due to the late filing of a certified priority 
document.
    Comment 9: One comment suggested that proposed Sec.  1.55 is 
unclear with respect to the deadline for submission of certified copies 
and priority claims for applications that claim priority to multiple 
prior filed foreign applications. The comment suggested that either the 
rule specify that the deadline is sixteen months from the earliest 
priority application to which a claim for priority is made, or sixteen 
months from the filing date of any priority application to which a 
claim of priority is made.
    Response: Section 1.55(f) provides that in an original application 
filed under 35 U.S.C. 111(a), a certified copy of the foreign 
application must be filed within the later of four months from the 
actual filing date of the application or sixteen months from the filing 
date of the prior foreign application, except as provided in Sec.  
1.55(h) and (i). The sixteen-month time frame in Sec.  1.55 for filing 
a certified copy of a foreign priority application is measured from the 
filing date of any foreign application for which priority is claimed.
    Comment 10: One comment suggested that the Office clarify whether 
an applicant who files a 35 U.S.C. 111(a) application claiming the 
benefit of a PCT application (i.e., a ``bypass'' application) may 
establish compliance with Sec.  1.55 either by complying with Sec.  
1.55(a)(2) (applicable to ``original applications'') or by establishing 
compliance with Sec.  1.55(a)(3) (applicable to PCT national stage 
applications) during the international phase of the parent PCT 
application to provide applicants the greatest flexibility to choose 
the path of entry into the U.S. for an application filed under the PCT. 
The comment further requested clarification that the requirement in 
Sec.  1.55 pertaining to 35 U.S.C. 371 applications refers to the 
filing of a certified copy of the foreign priority document during the 
international phase and not during the national phase.
    Response: An application filed under 35 U.S.C. 111(a) (including a 
``bypass'' application claiming the benefit of a PCT application, which 
PCT application claims priority to a foreign application) must comply 
with the time for filing a priority claim and a certified copy of a 
priority document set forth in Sec.  1.55(d) and (f) as adopted in this 
final rule. Section 1.55(d) requires that in an application under 35 
U.S.C. 111(a), a claim for priority must be filed within the later of 
four months from the actual filing date of the application or sixteen 
months from the filing date of the prior foreign application. Section 
1.55(f) requires that in an application under 35 U.S.C. 111(a), a 
certified copy of the foreign application must be filed within the 
later of four months from the actual filing date of the application or 
sixteen months from the filing date of the prior foreign application, 
except as provided in Sec.  1.55((h) and (i). This timing differs from 
that for an international application entering the national stage under 
35 U.S.C. 371, wherein the claim for priority must be made and a 
certified copy of the foreign application must be filed within the time 
limit set forth in the PCT and the Regulations under the PCT.
    With respect to the requirements of Sec.  1.55 as they pertain to 
applications entering the national stage under 35 U.S.C. 371, if the 
applicant submitted a certified copy of the foreign priority document 
in compliance with PCT Rule 17 during the international phase, the 
International Bureau will forward a copy of the certified priority 
document to each Designated Office that has requested a copy of the 
foreign priority document and the copy received from the International 
Bureau is acceptable to establish that applicant has filed a certified 
copy of the priority document. See MPEP Sec.  1893.03(c). If, however, 
the International Bureau is unable to forward a copy of the certified 
priority document because the applicant failed to submit a certified 
copy of the foreign priority document during the international phase, 
the applicant will need to provide a certified copy of the priority 
document or have the document furnished in accordance with the priority 
document exchange program during the national stage to fulfill the 
requirements of Sec.  1.55. See id.
    Comment 11: One comment asked whether the requirement for the 
certified copy of the foreign application of proposed Sec.  1.55(a)(2) 
would be met if a certified copy of the foreign application is 
submitted in a U.S. parent application within the time period specified 
in the proposed rule. The comment further asked if it would be 
necessary for the applicant to indicate that the certified copy of the 
foreign application was submitted in the U.S. parent application.
    Response: Consistent with current practice, it is not necessary to 
file a certified copy of a foreign application in a later-filed 
application that claims the benefit of an earlier nonprovisional 
application where: (1) Priority to the foreign application is claimed 
in the later-filed application (i.e., continuation, continuation-in-
part, division) or in a reissue application; and (2) a certified copy 
of the foreign application has been filed in the earlier nonprovisional 
application. When making such claim for priority, the applicant must 
identify the earlier nonprovisional application containing the 
certified copy. See MPEP Sec.  201.14(b).
    Comment 12: One comment requested clarification as to whether an 
applicant may obtain an extension of time to file an English-language 
translation when filing the English-language translation in response to 
an Office action, notwithstanding that proposed Sec.  1.55(f) indicates 
that time periods under that section are not extendable.
    Response: The time period for filing a translation is not set forth 
in Sec.  1.55, which only sets time periods for filing a foreign 
priority claim and a certified copy of the priority application. The 
provisions of Sec.  1.55(l) as adopted in this final rule apply to time 
periods actually set in Sec.  1.55, and not to time periods that are 
set in an Office action. Thus, an applicant may obtain an extension of 
time to file an English-language translation when filing the English-
language translation in response to an Office action, unless the Office 
action indicates that extensions of time are not available.
    Comment 13: One comment suggested that the Office should not 
require applicants to file a translation of a non-English language 
provisional application as currently required by Sec.  1.78(a)(5) 
because applicants are not required to file an English translation of 
foreign language priority documents except in limited circumstances.
    Response: The Office will take this suggestion under consideration. 
The Office did not propose any change to this practice, and thus has 
not had the benefit of public comment on the issue. Furthermore, the 
Office would need to gain greater experience with examination under the 
AIA to determine how often it is necessary to obtain translations of 
priority documents for the purposes of

[[Page 11040]]

examination under AIA 35 U.S.C. 102 and 103. As discussed previously, 
the Office plans to seek additional public comment on the rules of 
practice pertaining to the first inventor to file provisions of section 
3 of the AIA after the Office and the public have gained experience 
with the rules of practice pertaining to the first inventor to file 
provisions in operation.
    Comment 14: One comment requested that the Office provide a 
rationale or statutory basis for the proposed requirement of a 
``statement that the entire delay between the date the claim was due 
under paragraph (a) and the date the claim was filed was 
unintentional'' in a petition filed under proposed Sec.  1.55(c)(4) for 
late presentation of a priority claim. The comment further asserted 
that requirement of proof of the subjective intent of the applicant 
runs counter to many statutory changes in the AIA, and suggested that 
the Office could impose the loss of patent term adjustment to dissuade 
applicants from intentionally delaying the presentation of the priority 
claim.
    Response: The provisions for setting time periods for the filing of 
priority and benefit claims, and for accepting unintentionally delayed 
priority and benefit claims, were added by amendments to 35 U.S.C. 
119(b), 119(e), and 120 in the American Inventors Protection Act of 
1999 (AIPA). See Public Law 106-113, 113 Stat. 1501, 1501A-563 and 
1501A-564 (1999); see also Changes To Implement Eighteen-Month 
Publication of Patent Applications, 65 FR 57024, 57024-25, 57030-31, 
57054-55 (Sept. 20, 2000). The AIA did not revise these provisions for 
setting time periods for the filing of priority and benefit claims, and 
for accepting unintentionally delayed priority and benefit claims in 35 
U.S.C. 119(b), 119(e), and 120.

B. Required Statements in Transition Applications

    Comment 15: A number of comments opposed or expressed concerns with 
the statement requirements proposed in Sec. Sec.  1.55 and 1.78 that an 
applicant must provide one of two alternative statements to assist the 
Office's determination of whether a nonprovisional application filed on 
or after March 16, 2013 (``transition date'') that claims priority/
benefit to one or more pre-transition patent filings is subject to AIA 
35 U.S.C. 102 and 103 or pre-AIA 35 U.S.C. 102 and 103. Several 
comments opined that it is the examiner's burden to determine whether 
post-AIA provisions are applicable, and that the statement requirements 
are inconsistent with the prima facie case requirement of 35 U.S.C. 
102, 131, and 132, as well as costly, burdensome, unnecessary, and 
unjustified. One comment also stated that the number of applicants who 
will file applications of different scope that contain both pre-AIA and 
post-AIA disclosure will be miniscule.
    One comment stated that the statement requirements were similar to 
an examination support document requirement that was at issue in the 
Tafas litigation. See Tafas v. Kappos, 586 F.3d 1369 (Fed. Cir. 2009) 
(Tafas IV); Tafas v. Doll, 559 F.3d 1345 (Fed. Cir. 2009) (Tafas III); 
Tafas v. Dudas, 541 F. Supp. 2d 805 (E.D. Va. 2008) (Tafas II).
    Response: Sections 1.55 and 1.78 as adopted in this final rule 
require a statement from the applicant in a ``transition'' application 
(a nonprovisional application filed on or after March 16, 2013, that 
claims priority to, or the benefit of the filing date of an earlier 
application (i.e., foreign, provisional, or nonprovisional application, 
or an international application designating the United States) filed 
prior to March 16, 2013) only if the application contains, or contained 
at any time, a claim to a claimed invention that has an effective 
filing date on or after March 16, 2013. As discussed in the notice of 
proposed rulemaking, this statement is needed to assist the Office in 
determining whether the application is subject to AIA 35 U.S.C. 102 and 
103 (an AIA application) or pre-AIA 35 U.S.C. 102 and 103 (a pre-AIA 
application). See Changes To Implement the First Inventor To File 
Provisions of the Leahy-Smith America Invents Act, 77 FR at 43745, 
43747, and 43748. The Office is not requiring the applicant to indicate 
which particular claim or claims have a post March 16, 2013 effective 
filing date, or the effective filing date of each claim, as the Office 
does not need this information to determine whether the application is 
an AIA application or a pre-AIA application. See id. As also discussed 
in the notice of proposed rulemaking, if the Office must determine on 
its own the effective filing date of every claim ever presented in an 
application filed on or after March 16, 2013, that claims priority to 
or the benefit of an application filed prior to March 16, 2013, 
examination costs will significantly increase. See id.
    The changes to Sec. Sec.  1.55 and 1.78 as adopted in this final 
rule do not implicate the prima facie case requirement. The prima facie 
case requirement pertains to the making of rejections and objections 
under 35 U.S.C. 131 and 132. See In re Jung, 637 F.3d 1356, 1362 (Fed. 
Cir. 2012). While 35 U.S.C. 131 provides that the ``Director shall 
cause an examination to be made of the application,'' it does not 
preclude the Office from requiring the applicant to provide information 
that is reasonably necessary to the examination of the application. See 
Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1283 (Fed. Cir. 
2005). Sections 1.55 and 1.78 as adopted in this final rule do not 
require an applicant to engage in a ``self-examination'' of an 
application or make a prima facie case of entitlement to a patent. 
Rather, the requirement for a statement for certain transition 
applications in Sec. Sec.  1.55 and 1.78 as adopted in this final rule 
simply requires the applicant to provide information that will be used 
by the Office as an aid in determining whether to examine the 
application under AIA 35 U.S.C. 102 and 103 or pre-AIA 35 U.S.C. 102 
and 103.
    With respect to the suggestion that the changes proposed to 
Sec. Sec.  1.55 and 1.78 would add costs and burdens to the patent 
application process, the Office has revised Sec. Sec.  1.55 and 1.78 in 
this final rule to: (1) Require the statement in a transition 
application only if the application contains, or contained at any time, 
a claim to a claimed invention that has an effective filing date on or 
after March 16, 2013, (i.e., and not require a statement simply because 
the transition application discloses subject matter not also disclosed 
in the prior-filed application); and (2) indicate that no statement is 
required if the applicant reasonably believes on the basis of 
information already known to the individuals identified in Sec.  
1.56(c) that the nonprovisional application does not, and did not at 
any time, contain a claim to a claimed invention that has an effective 
filing date on or after March 16, 2013. Therefore, the changes to 
Sec. Sec.  1.55 and 1.78 adopted in this final rule should not require 
additional investigation on the part of the applicant and thus should 
not be costly or burdensome. In any event, the applicant will have 
prepared both the transition application and its priority or benefit 
application(s) and thus should be far more familiar with the contents 
thereof than an examiner who was not involved in the preparation of any 
of the applications. Patent applicants would need to pay higher filing 
fees to recover the significantly higher examination costs if Office 
personnel were required to independently determine the effective filing 
date of each claim ever presented in an application. As a result of the 
statement requirement, the Office

[[Page 11041]]

and the public will have greater certainty as to whether any resulting 
patent is an AIA or pre-AIA patent. See Star Fruits, 393 F.3d at 1284. 
Therefore, the patent examination process will operate more effectively 
if this information (whether the application ever contained a claim to 
a claimed invention that has an effective filing date on or after March 
16, 2013) is provided at the outset by the party having the best access 
to the information.
    The requirement for a statement for certain transition applications 
in Sec. Sec.  1.55 and 1.78 as adopted in this final rule bears no 
relationship to the examination support document at issue in the Tafas 
litigation. The requirement for a statement for certain transition 
applications in Sec. Sec.  1.55 and 1.78 as adopted in this final rule 
involves a determination and statement that is comparable to 
determinations and statements required under pre-existing rules of 
practice regarding the absence of new matter. See Sec.  1.57(f) 
(requires amendment inserting material incorporated by reference to be 
accompanied by a statement that the amendment contains no new matter), 
Sec.  1.125(b) (requires a substitute specification to be accompanied 
by a statement that the substitute specification includes no new 
matter), and former Sec.  1.63(d)(1)(iii) (permits use of an oath or 
declaration from a prior application in a continuation or divisional 
application that contains no matter that would have been new matter in 
the prior application). The concern with the examination support 
document in the Tafas litigation, meanwhile, was that it required a 
prior art search by the applicant and was viewed as shifting the burden 
of proving patentability onto the applicant. See Tafas III, 559 F.3d at 
1373-74 (dissent), and Tafas II, 541 F. Supp. 2d at 817. Sections 1.55 
and 1.78 as adopted in this final rule do not require an extensive 
investigation or search of the prior art, but instead simply require a 
statement for certain transition applications based upon information 
that is already in the applicant's possession.
    With respect to the suggestion that the number of applicants who 
will file applications of different scope that contain both pre-AIA and 
post-AIA disclosure will be miniscule, an applicant who avoids filing 
serial applications of different scope that contain both pre-AIA and 
post-AIA disclosure is not required to provide any statement under 
Sec. Sec.  1.55 and 1.78 as adopted in this final rule. Thus, if the 
number of serial applications of different scope that contain both pre-
AIA and post-AIA disclosure is miniscule as suggested by the comment, 
then only the few patent applicants who engage in this atypical 
application filing practice will need to provide a statement under 
Sec.  1.55 or 1.78 as adopted in this final rule.
    Comment 16: A number of comments suggested removing the requirement 
for a statement when a transition application adds, but does not claim, 
subject matter that is not supported in a benefit or priority 
application filed before March 16, 2013. Several comments indicated 
that such a statement is burdensome and of limited use, with one 
comment noting that the statutory language makes clear that the 
determination of whether an application is subject to AIA or pre-AIA 35 
U.S.C. 102 and 103 is governed solely by claims. Several comments 
stated that it is difficult to determine whether certain changes to the 
disclosure would be considered ``added'' subject matter. Several 
comments asked whether a statement would be required if only editorial 
or other minor changes were made to an application before it is filed.
    Response: Sections 1.55 and 1.78 as adopted in this final rule do 
not require a statement if a transition application discloses, but does 
not claim, subject matter that is not supported in a benefit or 
priority application filed before March 16, 2013.
    Comment 17: Several comments asserted that the required statements 
in proposed Sec.  1.55 and 1.78 are unnecessary since an examiner can 
address in a rejection that certain subject matter or claims are not 
supported by the priority application, giving an applicant the 
opportunity to respond to either the prior art rejection or a rejection 
under 35 U.S.C. 112 for claim amendments that add subject matter. 
Several comments suggested deferring the determination of whether the 
application is an AIA application or a pre-AIA application until and 
unless a rejection is addressed with a pre-AIA Sec.  1.131 affidavit or 
declaration. Several comments asserted that by dealing with this issue 
in the context of a rejection, the dispute of whether the application 
ever contained a claim having an effective filing date that is on or 
after March 16, 2013, can be resolved through appeal.
    Response: The suggested alternative of having the examiner address 
the issue of entitlement to priority or the benefit of an earlier 
filing date, and allowing the applicant to address the issue in a 
response to the Office action, would entail the same examination costs 
that the Office would incur to determine on its own whether an 
application is an AIA application or a pre-AIA application prior to 
issuing an Office action. Moreover, a claim is not subject to a 
rejection under AIA 35 U.S.C. 102 or 103 (unless there is intervening 
prior art) or under 35 U.S.C. 112(a) simply because the claim is to a 
claimed invention that has an effective filing date on or after March 
16, 2013. Lastly, the differences between AIA 35 U.S.C. 102 and 103 and 
pre-AIA 35 U.S.C. 102 and 103 are not limited to the ability to 
antedate prior art by showing prior invention under Sec.  1.131.
    Comment 18: One comment questioned whether the statement 
requirement under Sec. Sec.  1.55 and 1.78 is part of the applicant's 
duty of disclosure. Several comments were concerned that the 
requirement to make these statements would increase the likelihood of 
charges of inequitable conduct. Two comments requested clarification of 
the Office's suggestion to include the ``reasonable belief'' language 
in the required statements. Another comment suggested that the Office 
include in the rules that the required statements made by applicant 
would not impact the validity of the patent.
    Response: The Office is providing in this final rule that an 
applicant is not required to provide such a statement if the applicant 
reasonably believes on the basis of information already known to the 
individuals designated as having a duty of disclosure with respect to 
the application that the transition application does not, and did not 
at any time, contain a claim to a claimed invention that has an 
effective filing date on or after March 16, 2013. However, Sec.  1.56 
also includes a general duty of candor and good faith in dealing with 
the Office, which could be implicated if an applicant is aware that a 
transition application contains a claim to a claimed invention that has 
an effective filing date on or after March 16, 2013, but nonetheless 
chooses not to provide the statement when required under Sec.  1.55 or 
1.78.
    Comment 19: One comment questioned how long the statement 
requirement would be applicable, noting that an application may claim 
the benefit under 35 U.S.C. 120 and Sec.  1.78 of an application filed 
many years earlier.
    Response: The requirement for a statement for certain transition 
applications in Sec. Sec.  1.55 and 1.78 as adopted in this final rule 
is implicated whenever an application filed on or after March 16, 2013, 
claims a right of priority to or the benefit of the filing date of an 
application filed prior to March 16, 2013. This requirement, however, 
should not affect continuation

[[Page 11042]]

or divisional applications because a continuation or divisional 
application discloses and claims only subject matter also disclosed in 
the prior-filed application. See MPEP Sec.  201.06 (defines divisional 
application), and Sec.  201.07 (defines continuation application). In 
addition, an application claiming a right of priority to a foreign 
application or the benefit of a provisional application must be filed 
within one year of the filing date of the foreign or provisional 
application. See 35 U.S.C. 119(a) and 119(e). In view of the one-year 
filing period requirement in 35 U.S.C. 119(a) and 119(e), this 
requirement should not affect applications filed after May 16, 2014, 
that claim only a right of priority to one or more foreign 
applications, or that only claim the benefit of one or more provisional 
applications (the critical date is May 16, 2014, rather than March 16, 
2014, in view of the changes to 35 U.S.C. 119 in section 201(c) of the 
the Patent Law Treaties Implementation Act of 2012, Public Law 112-211 
(2012)). Therefore, after March 16, 2014, (or May 16, 2014, the 
statement required by Sec. Sec.  1.55 and 1.78 as adopted in this final 
rule for certain transition applications should be necessary only in 
certain continuation-in-part applications.
    Comment 20: One comment suggested that the Office extend the four-
month deadline for making the statements required under Sec. Sec.  1.55 
and 1.78 because it is burdensome on applicants to identify the 
existence of claims having an effective filing date after March 16, 
2013, and missing the deadline would trigger a requirement for 
information under Sec.  1.105 that the applicant identify where there 
is written description support for the remaining claims in the 
nonprovisional application. One comment asserted that this requirement 
for information under Sec.  1.105 is punitive, arbitrary, and 
capricious. One comment asserted that a request for admission (with 
sanctions for failure to be accurate) is inappropriate, especially 
where it is unclear whether a statement is necessary. One comment 
questioned whether the Office would require a statement under 
Sec. Sec.  1.55 or 1.78 if no statement is made prior to examination, 
but it is later determined that a statement should be made regarding 
either new subject matter or new claims not supported by a pre-AIA 
application for which priority or benefit is claimed. One comment 
raised concerns that a practitioner may be forced to choose between 
violating state bar rules by making a statement adverse to a client's 
interests or violating the Office's rules of practice.
    Response: This final rule does not provide that the Office will 
issue a requirement for information under Sec.  1.105 as a sanction or 
penalty for non-compliance with the statement requirement under 
Sec. Sec.  1.55 and 1.78. Rather, the Office is simply indicating that 
the Office may issue a requirement for information under Sec.  1.105 if 
an applicant takes conflicting positions on whether an application 
contains, or contained at any time, a claim to a claimed invention 
having an effective filing date on or after March 16, 2013. For 
example, the Office may require the applicant to identify where there 
is written description support under 35 U.S.C. 112(a) in the pre-AIA 
application for each claim to a claimed invention if an applicant 
provides a statement under Sec.  1.55 or Sec.  1.78, but later argues 
that the application should have been examined as a pre-AIA application 
because the application does not actually contain a claim to a claimed 
invention having an effective filing date on or after March 16, 2013. 
The Office would not issue a requirement for information under Sec.  
1.105 simply because of a disagreement with the applicant's statement 
under Sec.  1.55 or Sec.  1.78 or the lack of such a statement.
    Comment 21: Several comments suggested that the Office provide a 
mechanism (e.g., a check box) on the application data sheet to enable 
applicants to make the required statements. One comment stated that 
stakeholders should be able to identify which law applies with ease and 
transparency, and further suggested putting notice on the face of the 
patent to indicate whether the patent was issued under pre-AIA law or 
AIA law.
    Response: The Office is revising the application data sheet to 
include a check box to allow applicants to easily indicate whether a 
transition application contains or ever contained a claim to a claimed 
invention having an effective filing date that is on or after March 16, 
2013. The Office plans to indicate in the Office's Patent Application 
Locating and Monitoring (PALM) system whether the Office is treating an 
application as subject to pre-AIA 35 U.S.C. 102 and 103 (a pre-AIA 
application) or AIA 35 U.S.C. 102 and 103 (an AIA application). Members 
of the public may access this information via the Patent Application 
Information Retrieval (PAIR) system. Furthermore, form paragraphs for 
use in Office actions will be developed which will identify whether the 
provisions of pre-AIA 35 U.S.C. 102 and 103 or AIA 35 U.S.C. 102 and 
103 apply if there is a rejection based upon 35 U.S.C. 102 or 103.
    Comment 22: Several comments proposed that the Office initially 
examine all applications filed on or after March 16, 2013, as if they 
were subject to the post-AIA provisions. Specifically, if an 
application is subject to a prior art rejection based on post-AIA 
provisions, applicants would have the opportunity to provide evidence 
that the application is subject to pre-AIA provisions. One comment 
noted that a prior art search conducted under AIA 35 U.S.C. 102 and 103 
is broader than a search conducted under pre-AIA 35 U.S.C. 102 and 103, 
and therefore would encompass substantially all prior art under pre-AIA 
35 U.S.C. 102 and 103, with two possible limited exceptions for 
commonly owned or joint research agreement patents and patent 
application publications and certain grace period disclosures measured 
from the filing date of a foreign priority application (instead of from 
the earliest effective U.S. filing). One comment noted that conducting 
searches under a single standard would minimize the training burden on 
examiners and the confusion that would arise if searches are conducted 
under different standards for different applications.
    Response: The suggested alternative of treating all applications 
filed on or after March 16, 2013, as subject to AIA 35 U.S.C. 102 and 
103 (e.g., as AIA applications) entails the risk of issuing patents 
containing unpatentable claims. For example, the provision in pre-AIA 
35 U.S.C. 103(c) concerning the availability of commonly owned prior 
art applies only to pre-AIA 35 U.S.C. 103 for a pre-AIA application, 
and thus a claimed invention in a pre-AIA application examined under 
AIA 35 U.S.C. 102 and 103 could appear to be patentable where a 
rejection under pre-AIA 35 U.S.C. 102(e) on the basis of commonly owned 
prior art might be appropriate. In addition, such a practice would also 
shift the burden of determining whether an issued patent is really an 
AIA patent or a pre-AIA patent to the public.
    Comment 23: One comment requested clarification regarding whether a 
continuation or a divisional application filed after March 16, 2013, 
and having a claim not presented in the prior pre-AIA application, but 
not containing new matter, would require a statement to that effect. 
Another comment requested clarification as to whether subject matter 
not claimed, but fully supported, in a pre-AIA application that is 
later claimed in a continuation or divisional filed after March 16, 
2013, would make the application subject to AIA 35 U.S.C. 102 and 103.

[[Page 11043]]

    Response: The addition of a claim in a transition application that 
is directed to subject matter fully supported in a pre-AIA benefit or 
priority application would not itself trigger the statement requirement 
under Sec.  1.55 or Sec.  1.78 and would not make the application 
subject to AIA 35 U.S.C. 102 and 103.
    Comment 24: Several comments suggested that the Office should 
clarify that an amendment to the claims that lacks support under 35 
U.S.C. 112(a) does not convert that application into an AIA 
application.
    Response: For an application filed on or after March 16, 2013, that 
discloses and claims only subject matter also disclosed in a previously 
filed pre-AIA application to which the application filed on or after 
March 16, 2013, is entitled to priority or benefit under 35 U.S.C. 119, 
120, 121, or 365, an amendment (other than a preliminary amendment 
filed on the same day as such application) seeking to add a claim to a 
claimed invention that is directed to new matter would not convert the 
application into an AIA application. 35 U.S.C. 132(a) prohibits the 
introduction of new matter into the disclosure and thus an application 
may not actually ``contain'' a claim to a claimed invention that is 
directed to new matter. The Office notes that the MPEP sets forth the 
following process for treating amendments that are believed to contain 
new matter: (1) A new drawing should not be entered if the examiner 
discovers that the drawing contains new matter (MPEP Sec.  608.02); and 
(2) amendments to the written description or claims involving new 
matter are ordinarily entered, but the new matter is required to be 
cancelled from the written description and the claims directed to the 
new matter are rejected under 35 U.S.C. 112(a) (MPEP Sec.  608.04). 
This process for treating amendments containing new matter is purely an 
administrative process for handling an amendment seeking to introduce 
new matter into the disclosure of the invention in violation of 35 
U.S.C. 132(a) and resolving disputes between the applicant and an 
examiner as to whether a new drawing or amendment to the written 
description or claims would actually introduce new matter.
    Comment 25: One comment suggested that the rules should provide 
recourse in the situation where there has been an inadvertent addition 
of a claim, or a specific reference to a prior-filed application, that 
causes the application to be subject to AIA 35 U.S.C. 102 and 103. The 
comment suggested that the applicant be permitted to file an oath or 
declaration asserting such inadvertence, such that the application may 
be examined under pre-AIA 35 U.S.C. 102 and 103.
    Response: There is no provision in the AIA for an application (or 
any patent issuing thereon) that contains, or contained at any time, 
such a claim or specific reference to be subject to pre-AIA 35 U.S.C. 
102 and 103 instead of AIA 35 U.S.C. 102 and 103 on the basis of the 
claim or specific reference being submitted by inadvertence or on the 
basis of an oath or declaration asserting that the claim or specific 
reference was submitted by inadvertence. As discussed previously, 
however, for an application filed on or after March 16, 2013, that 
discloses and claims only subject matter also disclosed in a previously 
filed pre-AIA application to which the application filed on or after 
March 16, 2013, is entitled to priority or benefit under 35 U.S.C. 119, 
120, 121, or 365, an amendment (other than a preliminary amendment 
filed on the same day as such application) seeking to add a claim to a 
claimed invention that is directed to new matter would not convert the 
application into an AIA application.
    Comment 26: One comment suggested that the Office provide an 
applicant with the opportunity to: (1) Cancel any claims to a claimed 
invention having an effective filing date before March 16, 2013, from 
the application; and/or (2) file a divisional application directed to 
the cancelled subject matter to enable applicants to have the claims in 
the divisional application examined under pre-AIA 35 U.S.C 102 and 103.
    Response: If an application on filing contains at least one claim 
having an effective filing date before March 16, 2013, and at least one 
claim having an effective filing date on or after March 16, 2013, the 
application will be examined under AIA even if the latter claims are 
cancelled. However, if a pre-AIA parent application is pending and an 
applicant inadvertently files a continuing application with claims 
having an effective filing date on or after March 16, 2013, the 
applicant could file a continuation or divisional application from the 
pre-AIA parent application without any claim to the benefit of the AIA 
application and without any claim to a claimed invention having an 
effective filing date on or after March 16, 2013. In this situation, 
the continuation or divisional application would be examined as a pre-
AIA application under pre-AIA 35 U.S.C. 102 and 103.
    Comment 27: One comment suggested that the statements required 
under Sec.  1.55 or Sec.  1.78 for transition applications containing a 
claim having an effective filing date that is on or after March 16, 
2013, that was first presented after the four-month deadline could be 
made in an amendment or response during prosecution. One comment 
questioned whether the statement could be submitted during the period 
set in Sec.  1.53 for reply to a notice to file missing parts of an 
application.
    Response: Sections 1.55(j), 1.78(a)(6), and (c)(6) set out the time 
period within which such a statement (when required) must be submitted. 
Such a statement (when required) must be submitted within the later of 
four months from the actual filing date of the nonprovisional 
application, four months from the date of entry into the national stage 
as set forth in Sec.  1.491 in an international application, sixteen 
months from the filing date of the prior-filed foreign application, or 
the date that a first claim to a claimed invention that has an 
effective filing date on or after March 16, 2013, is presented in the 
nonprovisional application. The time frame specified in Sec.  1.55 or 
Sec.  1.78 is not affected by the issuance of a notice to file missing 
parts of an application under Sec.  1.53. In addition, the Office has 
enlarged the time period for filing the inventor's oath or declaration, 
which should reduce the situations in which it is necessary to issue a 
notice to file missing parts of an application under Sec.  1.53. See 
Changes To Implement the Inventor's Oath or Declaration Provisions of 
the Leahy-Smith America Invents Act, 77 FR 48776, 48779-80 (Aug. 14, 
2012). Permitting the statement required by Sec.  1.55 or Sec.  1.78 
for certain transition applications to be submitted during the period 
set in Sec.  1.53 for reply to a notice to file missing parts of an 
application would encourage applicants to file applications that are 
not in condition for examination.

C. Prior Inventor Disclosures (Sections 1.130 and 1.77)

    Comment 28: One comment suggested that the organization of Sec.  
1.130 be improved to clarify the different requirements for a 
declaration depending on the applicable circumstances. One comment 
suggested that proposed Sec.  1.130 should be revised to remove the 
requirement that the ``subject matter disclosed'' be shown to have been 
``invented'' by one of the coinventors of the application because such 
subject matter may not necessarily correspond to the claimed invention. 
The comment further suggested that the rule be revised to conform to 
the statute and require instead that the declaration establish that the 
subject matter that is disclosed was obtained directly or indirectly 
from an inventor of the invention that is claimed. One comment

[[Page 11044]]

expressed concern that the language ``subject matter of the 
disclosure'' used in proposed Sec.  1.130 did not track the statutory 
language of ``subject matter disclosed.'' Another comment suggested 
that the Office take a general approach, similar to that taken in 
current affidavit practice under Sec. Sec.  1.131 and 1.132 regarding 
the submission of evidence under proposed Sec.  1.130, leaving out the 
details regarding the sufficiency of the evidence which will develop on 
a case-by-case basis.
    Response: Section 1.130 as adopted in this final rule has been 
revised to more closely track the language of the statute and has been 
streamlined to set forth only the procedural requirements for 
submitting a declaration or affidavit of attribution under Sec.  
1.130(a) and a declaration or affidavit of prior public disclosure by 
the inventor or a joint inventor under Sec.  1.130(b). The rule only 
requires the information necessary for the Office to make a decision 
(i.e., a copy or description of the prior disclosure where applicable). 
The showing required for establishing sufficiency of a declaration or 
affidavit under Sec.  1.130 is discussed in the Examination Guidelines 
for Implementing the First Inventor To File Provisions of the Leahy-
Smith America Invents Act.
    Comment 29: One comment suggested that proposed Sec.  1.130 
reallocates the burden of proof to show derivation to the inventor and 
is thus substantive.
    Response: As discussed above, Sec.  1.130 as adopted in this final 
rule simply sets forth the procedural requirements for an affidavit or 
declaration under Sec.  1.130.
    Comment 30: One comment questioned the requirement in proposed 
Sec.  1.130 that a declaration be accompanied by evidence and requested 
that the Office clarify whether a later submission of evidence which 
supports, but does not initially accompany, a Sec.  1.130 affidavit or 
declaration would be rejected.
    Response: The submission of evidence with a declaration must be 
timely or seasonably filed to be entered and entitled to consideration. 
This is the current standard for declaration/affidavit practice under 
pre-existing Sec. Sec.  1.131 and 1.132 as set forth in MPEP Sec. Sec.  
715.09 and 716.01, respectively. Specifically, affidavits and 
declarations and other evidence traversing rejections are considered 
timely if submitted: (1) Prior to a final rejection; (2) before appeal 
in an application not having a final rejection; (3) after final 
rejection, but before or on the same date of filing an appeal, upon a 
showing of good and sufficient reasons why the affidavit or other 
evidence is necessary and was not earlier presented in compliance with 
Sec.  1.116(e); or (4) after the prosecution is closed (e.g., after a 
final rejection, after appeal, or after allowance) if applicant files 
the affidavit or other evidence with a request for continued 
examination (RCE) under Sec.  1.114 in a utility or plant application 
filed on or after June 8, 1995, or a continued prosecution application 
(CPA) under Sec.  1.53(d) in a design application. See MPEP section 
715.09 and 716.01.
    Comment 31: One comment requested that declarations submitted under 
proposed Sec.  1.130(b) for a Katz-type declaration (an affidavit or 
declaration of attribution as discussed in MPEP Sec.  716.10) and under 
proposed Sec.  1.130(d) for a showing of derivation be permitted to be 
filed confidentially.
    Response: Declarations or affidavits filed by an applicant or 
patent owner to overcome a rejection or an objection cannot be filed 
confidentially because the public needs to know what evidence the 
examiner relied upon in determining the patentability of the claims. 
Current practice does not provide for the confidential filing of an 
affidavit or declaration of attribution or an affidavit or declaration 
to show derivation. However, applicants may submit proprietary 
information with a petition to expunge under limited circumstances as 
explained in MPEP Sec.  724.
    Comment 32: One comment suggested that the Office instruct patent 
applicants to come forward with any disclosures of which they are aware 
that may qualify as a prior art exception under AIA 35 U.S.C. 102(b). 
Another comment suggested that the final rules require an applicant's 
disclosure of prior secret commercial use of the claimed invention for 
more than one year prior to the original filing date given the 
ambiguities in the statute.
    Response: Section 1.77 permits, but does not require, an applicant 
to provide a statement regarding prior disclosures by the inventor or a 
joint inventor. An applicant is not ``required'' to identify any prior 
disclosures by the inventor or a joint inventor unless the prior 
disclosure is not a grace period disclosure and is ``material to 
patentability'' or the prior disclosure is a grace period disclosure 
and the applicant is seeking to rely upon the prior disclosure to 
overcome a rejection. However, identifying any prior disclosures by the 
inventor or a joint inventor may save applicants (and the Office) the 
costs related to an Office action and reply and expedite examination of 
the application.
    Comment 33: One comment suggested that the Office should not permit 
the mere listing of prior disclosures in an application under proposed 
Sec.  1.77 but rather by way of affidavit or declaration, unless it is 
readily apparent that these prior disclosures originated with the 
inventor because the inventor's oath or declaration only attests to the 
claims of the application and not to the origin of the prior 
disclosures listed in the application.
    Response: Sections 1.63(c) and 1.64(c) state that a person may not 
execute an inventor's oath or declaration for an application unless 
that person has reviewed and understands the contents of the 
application, including the claims, and is aware of the duty to disclose 
to the Office all information known to the person to be material to 
patentability as defined in Sec.  1.56. See Changes To Implement the 
Inventor's Oath or Declaration Provisions of the Leahy-Smith America 
Invents Act, 77 FR at 48818-19. Therefore, it is not necessary to have 
a person executing an inventor's oath or declaration under Sec.  1.63 
or 1.64 provide a separate affidavit or declaration attesting to the 
statements in the application as filed.
    Comment 34: One comment suggested that the Office add a 
corroboration requirement to proposed Sec. Sec.  1.130 and 1.131.
    Response: The Office does not consider a per se requirement for 
corroboration to be necessary in ex parte examination (i.e., 
application examination or ex parte patent reexamination) proceedings. 
The need for corroboration in ex parte proceedings is a case-by-case 
determination based upon the specific facts of the case.
    Comment 35: One comment asserted that there is a difference between 
a ``disclosure'' and a ``public disclosure'' from the provision set 
forth in proposed Sec.  1.130(c) (which stated that if an earlier 
disclosure was not a printed publication, the affidavit or declaration 
must describe the disclosure with sufficient detail and particularity 
to determine that the disclosure is a public disclosure of the subject 
matter on which the rejection is based) and requested clarification in 
the MPEP or other materials on what facts are needed to establish a 
public disclosure.
    Response: The term ``disclosure'' includes disclosures that are not 
public. For example, prior filed, later published U.S. patent 
applications are considered disclosures on their earliest effective 
filing dates, which is not the date on which the disclosure was made 
publicly available. The showing required to establish a public 
disclosure is discussed in the Examination Guidelines for Implementing 
the First

[[Page 11045]]

Inventor To File Provisions of the Leahy-Smith America Invents Act.
    Comment 36: One comment suggested revising the last sentences of 
proposed Sec.  1.130(c) and (e) to make the standard for evaluating 
both non-publications and publications the same and to eliminate the 
potentially confusing reference to the language ``the subject matter on 
which the rejection is based.''
    Response: Section 1.130 as adopted in this final rule does not 
include the standard for evaluating the sufficiency of a declaration or 
attribution or refer to ``the subject matter on which the rejection is 
based.'' The details regarding the showing needed to establish a 
successful declaration or affidavit under Sec.  1.130 are discussed in 
the Examination Guidelines for Implementing the First Inventor To File 
Provisions of the Leahy-Smith America Invents Act.
    Comment 37: One comment suggested amending proposed Sec. Sec.  
1.130 and 1.131 to indicate that a disclosure on which the rejection is 
based is not prior art when the disclosure is based on the public 
disclosure or subject matter published by the inventor or joint 
inventor.
    Response: As discussed previously, Sec.  1.130 has been streamlined 
to set forth only the procedural requirements for submitting a 
declaration or affidavit of attribution under this section. The showing 
required for establishing sufficiency of a declaration or affidavit 
under Sec.  1.130 as adopted in this final rule is discussed in the 
Examination Guidelines for Implementing the First Inventor To File 
Provisions of the Leahy-Smith America Invents Act.
    Comment 38: One comment requested an explanation of how the Office 
would use statements made in a declaration under proposed Sec.  1.130 
in the examination of other applications. The comment further asked 
whether the Office would provide a way for the examiners and the public 
to search the contents of the declarations.
    Response: The Office plans to include information on the cover 
sheet of U.S. patents if an affidavit or declaration containing 
evidence of a prior public disclosure under Sec.  1.130(b) was filed 
during the prosecution of the application for that patent in order to 
facilitate search by examiners and the public of prior public 
disclosures brought to the Office's attention under Sec.  1.130(b).

D. Proposed Requirement in Sec.  1.130 To Initiate Derivation 
Proceedings

    Comment 39: Several comments opposed the Office requiring a 
petition for a derivation proceeding in proposed Sec.  1.130(f). One 
comment asserted that such a requirement would be unduly burdensome and 
premature if based on the published claims of an unexamined application 
which may not be patentable to the earlier applicant. One comment 
stated that there was no basis for requiring the filing of a derivation 
petition when an applicant may avoid a rejection in another way such as 
by amending the claims. One comment asserted that since derivation 
requests are statutorily permissive, the Office should suggest or 
recommend, but not require a derivation proceeding. One comment stated 
that applicants, not the Office, are in the best position to decide if 
a derivation proceeding should be instituted. One comment requested 
that the Office establish standards for determining whether an 
applicant is required to file a petition for a derivation proceeding.
    Response: Section 1.130 as adopted in this final rule does not 
include a requirement to file a petition for a derivation proceeding 
and instead provides that an applicant or patent owner may file a 
petition for a derivation proceeding if the patent or pending 
application naming another inventor claims an invention that is the 
same or substantially the same as the applicant's or patent owner's 
claimed invention.
    Comment 40: One comment suggested that instead of requiring the 
initiation of a derivation proceeding, the Office should implement a 
rule that would allow an AIA 35 U.S.C. 102(b)(2)(A) exception from 
prior art to extend only to disclosed but unclaimed subject matter in 
an earlier patent filing, and that a patent be permitted to issue on a 
claimed invention only if the claims with the earlier effective filing 
date are cancelled via a derivation proceeding or post-grant review 
proceeding. Another comment questioned whether there are any cases 
where the Office would not require the applicant to file a petition for 
a derivation proceeding even if the claims are the same and the 
inventors are different.
    Response: Section 1.130 as adopted in this final rule does not 
include a requirement to file a petition for a derivation proceeding. 
An applicant or patent owner has the discretion to file a petition for 
a derivation proceeding pursuant to Sec.  42.401 et seq. of this title. 
In the event that a patent is issued on a later filed application 
claiming subject matter disclosed in an earlier filed application, the 
applicant in the earlier filed application may request early 
publication of the application under Sec.  1.219 and may cite the 
resulting patent application publication in the file of the patent on 
the later filed application under 35 U.S.C. 301 and Sec.  1.501.

E. Miscellaneous

    Comment 41: One comment suggested that the Office implement a rule 
wherein claiming in a U.S. application priority to, or the benefit of, 
an earlier application is considered an express consent by the 
applicant to provide anyone the right to obtain a copy of the priority 
document from the applicable patent office upon providing evidence of 
the U.S. application and the priority claim to the earlier application 
at issue.
    Response: The Office does not have jurisdiction to grant or deny 
access to patent applications filed in other intellectual property 
offices. Access to any patent application is determined by the national 
law of each country and cannot be governed by the regulations of 
another intellectual property office.
    Comment 42: One comment suggested that the proposed rules would be 
clearer if the Office consistently used the terms ``benefit claim'' or 
``priority claim'' when using the term ``claim'' in the context of the 
applicant asserting the benefit of an earlier priority date for a given 
claimed invention in order to differentiate the exact same term for two 
different purposes.
    Response: The Office will endeavor to be consistent with the use of 
the terms benefit claim and priority claim where it is necessary for 
clarity in the rule.
    Comment 43: One comment suggested retaining the provisions 
pertaining to pre-AIA applications in the regulations so that the 
public is not required to keep old copies of title 37 CFR for the next 
twenty years. The comment also suggested changes to the structure of 
Sec.  1.55 and Sec.  1.78.
    Response: The Office is retaining in the regulations the provisions 
pertaining to pre-AIA applications (e.g., Sec.  1.131) or modifying 
provisions in the regulations such that they pertain to both or either 
AIA or pre-AIA applications (e.g., Sec. Sec.  1.104 and 1.110). Certain 
provisions apply to any application filed on or after March 16, 2013, 
regardless of whether the application is an AIA or pre-AIA application 
(e.g., Sec. Sec.  1.55 and 1.78 apply to any application filed on or 
after March 16, 2013). In this situation, the regulations generally do 
not include provisions that apply only to applications filed prior to 
March 16, 2013. The Office has simplified the structure of Sec. Sec.  
1.55 and 1.78 and included paragraph headings for clarity.
    Comment 44: Two comments requested that the Office take the 
opportunity to clarify what is meant by ``conflicting claims'' in 
proposed Sec.  1.78(e) as the rule does not explicitly

[[Page 11046]]

recite the standard. One comment suggested that the standard should be 
that the claims are drawn to the same or substantially the same 
invention (as required in a derivation proceeding under the AIA or the 
pre-AIA interference provisions).
    Response: The term ``conflicting claims'' in Sec.  1.78 has been 
changed to ``patentably indistinct claims'' in this final rule for 
clarity.
    Comment 45: One comment suggested deleting the requirement set 
forth in proposed Sec.  1.55 to ``identify foreign applications with 
the same subject matter having a filing date before that of the 
application for which priority is claimed'' because this requirement 
appears unnecessarily burdensome and there does not appear to be a need 
for this information to determine foreign priority. One comment 
asserted that there is an inconsistency between proposed Sec.  
1.78(c)(5), which does not permit cross references to applications for 
which benefit is not claimed in an application data sheet, and proposed 
Sec.  1.55(a)(3), which permits the identification of foreign 
application for which priority is claimed, as well as any foreign 
application for the same subject matter having a filing date before 
that of the application for which priority is claimed.
    Response: The requirement to ``identify foreign applications with 
the same subject matter having a filing date before that of the 
application for which priority is claimed'' has been removed from Sec.  
1.55 in this final rule. The Office also revised Sec.  1.77 to indicate 
that cross-references to related applications should appear in the 
specification (rather than in an application data sheet).
    Comment 46: One comment requested that the Office exercise its 
regulatory authority to clarify what kind of grant qualifies as a joint 
research agreement and what type of cooperative agreement which is not 
a written contract qualifies as a joint research agreement for the 
purpose of disqualifying prior art under AIA 35 U.S.C. 102(b)(2)(C) and 
(c). Another comment suggested that the Office confirm an expansive or 
liberal interpretation of what constitutes a joint research agreement, 
so that entities who enter into collaborative agreements without formal 
written contracts drafted by legal experts can still rely on the 
provisions of AIA 35 U.S.C. 102(b)(2)(C).
    Response: AIA 35 U.S.C. 100(h) defines what constitutes a joint 
research agreement for purposes of AIA 35 U.S.C. 102. There was no 
substantive change to the definition of joint research agreement under 
the AIA.
    Comment 47: One comment requested that the Office provide a means 
for an applicant to confidentially make of record any joint research 
agreement, and require that only minimal disclosure of the parties 
involved in the joint research agreement in the specification in 
accordance with proposed Sec.  1.104. The comment further requested 
that the Office permit the amendment of the specification pursuant to 
Sec.  1.71(g)(1) regarding the parties involved in the joint research 
agreement throughout examination and without a fee because inventorship 
is necessarily an on-going determination throughout examination.
    Response: AIA 35 U.S.C. 102(c) does not require that a joint 
research agreement be made of record in the application, but does 
require the application to disclose or be amended to disclose the names 
of the parties to the joint research agreement. The Office will not 
enter an amendment to the specification regarding the parties involved 
in the joint research agreement throughout examination without a fee 
because the fee simply recovers the Office's costs of updating the 
record of the application.
    Comment 48: One comment suggested that a listing of parties to a 
joint research agreement be provided for in Sec.  1.77, which concerns 
arrangement of application elements.
    Response: Section 1.77(b)(4) provides for the disclosure of names 
of parties to a joint research agreement.
    Comment 49: One comment requested that proposed Sec.  
1.104(c)(5)(i) and (ii) specify that those sections apply to a claimed 
invention in an application ``pending'' on or after December 10, 2004.
    Response: Section 1.104 has been revised in this final rule to 
clearly specify which applications and patents are entitled to the 
provisions of Sec.  1.104(c)(5)(i) and (ii).
    Comment 50: One comment suggested that references to a joint 
inventor be added in proposed Sec. Sec.  1.78(a)(2) and 1.110 when the 
term inventor is not intended to apply to the entire inventive entity.
    Response: Sections 1.78 and 1.110 as adopted in this final rule 
refer to the inventor or a joint inventor as appropriate.
    Comment 51: One comment requested that the Office explain why the 
request for information regarding inventorship and ownership of the 
subject matter of individual claims set forth in proposed Sec.  1.110 
is not provided for in current Sec.  1.105 (Requirements for 
Information).
    Response: This specific provision was provided for in Sec.  1.110 
before Sec.  1.105 was implemented and was retained for examination 
purposes.
    Comment 52: One comment suggested that proposed Sec.  1.78(e) would 
give the Office the authority to require cancellation of claims and 
that the cancellation of claims is substantive.
    Response: Section 1.78(e) as adopted in this final rule does not 
represent a change in Office practice. See former Sec.  1.78(b) 
(``Where two or more applications filed by the same applicant contain 
conflicting claims, elimination of such claims from all but one 
application may be required in the absence of good and sufficient 
reason for their retention during pendency in more than one 
application'').
    Comment 53: One comment suggested amending proposed Sec.  1.131(b) 
to provide an appropriate example to show conception of an invention 
with due diligence.
    Response: MPEP Sec.  715 et seq. and the case law cited therein 
provide guidance regarding conception of an invention and due 
diligence.
    Comment 54: One comment suggested that the Office take the 
opportunity to revise Sec.  1.77(b) to separate out those items of 
information currently required under separate headings in a patent 
application that are now going to be tracked by the application data 
sheet (such as name, citizenship and residence of applicant, related 
applications, federally sponsored joint research, joint research 
agreements, and the proposed rule for prior disclosures by or for an 
inventor under Sec.  1.130). The comment further suggested that since 
the timeline for filing the information required by proposed Sec.  
1.77(b)(6) is not coextensive with the filing of the application, the 
requirement to include this information in the patent application seems 
out of place. The comment also suggested that keeping all of this 
information tracked and published as part of the application data sheet 
available on PAIR, or as part of the cover page of a patent or 
published application, would keep the public informed in a more 
efficient manner.
    Response: The arrangement of the specification as set out in Sec.  
1.77 is a suggested and preferred arrangement, but is not an 
arrangement that an applicant is required to follow. In addition, 
information such as related applications, federally sponsored joint 
research, joint research agreements, and prior inventor disclosures are 
not provided for in an application data sheet.
    Comment 55: One comment suggested that the Office should avoid 
using old rule numbers for new rules.

[[Page 11047]]

    Response: In general, the Office avoids using old rule numbers. The 
Office also prefers to group related rules together. In this instance, 
there are no rule numbers available in the vicinity of Sec. Sec.  
1.130, 1.131, and 1.132. Furthermore, former Sec.  1.130 has been 
rarely invoked. Thus, the potential confusion from relocating the 
provisions of former Sec.  1.130 to Sec.  1.131 and using Sec.  1.130 
for AIA applications is minimal.
    Comment 56: One comment requested that the Office provide a clear 
definition in Sec.  1.9 regarding what constitutes a divisional 
application.
    Response: MPEP Sec.  201.06 indicates that a divisional application 
is an application for an independent or distinct invention, carved out 
of a pending application and disclosing and claiming only subject 
matter disclosed in the earlier or parent application. This definition 
of divisional application located in the MPEP is adequate for current 
Office proceedings.
    Comment 57: One comment suggested that Sec.  1.110 be revised to 
include the phrase ``or obligation to assign ownership'' for 
completeness.
    Response: Section 1.110 as adopted in this final rule includes the 
phrase ``or obligation to assign ownership.''

Rulemaking Considerations

A. Administrative Procedure Act

    The changes in this final rule do not change the substantive 
criteria of patentability. These changes in this final rule involve 
rules of agency practice and procedure and/or interpretive rules. See 
Bachow Commc'ns Inc. v. FCC, 237 F.3d 683, 690 (D.C. Cir. 2001) (rules 
governing an application process are procedural under the 
Administrative Procedure Act); Inova Alexandria Hosp. v. Shalala, 244 
F.3d 342, 350 (4th Cir. 2001) (rules for handling appeals were 
procedural where they did not change the substantive standard for 
reviewing claims); Nat'l Org. of Veterans' Advocates v. Sec'y of 
Veterans Affairs, 260 F.3d 1365, 1375 (Fed. Cir. 2001) (rule that 
clarifies interpretation of a statute is interpretive).
    Accordingly, prior notice and opportunity for public comment are 
not required pursuant to 5 U.S.C. 553(b) or (c) (or any other law). See 
Cooper Techs. Co. v. Dudas, 536 F.3d 1330, 1336-37 (Fed. Cir. 2008) 
(stating that 5 U.S.C. 553, and thus 35 U.S.C. 2(b)(2)(B), does not 
require notice and comment rulemaking for ``interpretative rules, 
general statements of policy, or rules of agency organization, 
procedure, or practice'') (quoting 5 U.S.C. 553(b)(A)). The Office, 
however, published proposed changes and a Regulatory Flexibility Act 
certification as it sought the benefit of the public's views on the 
Office's proposed implementation of this provision of the AIA.
    One comment suggested that the Office's reliance upon Cooper 
Technologies is misplaced and that the Federal Circuit's decision in 
Tafas v. Kappos, 586 F.3d 1369 (Fed. Cir. 2009) (Tafas IV) requires 
notice and comment for all Office rulemakings. The Federal Circuit in 
Tafas IV granted the parties' request to dismiss the appeal in the 
Tafas litigation as moot and denied GlaxoSmithKline's and the Office's 
request to vacate the district court's decision in Tafas v. Dudas, 541 
F. Supp. 2d 805 (E.D. Va. 2008) (Tafas II). The Federal Circuit in 
Tafas IV did not reach the merits of the district court's decision in 
Tafas II and thus is not an ``affirmance'' of that decision. Moreover, 
the Federal Circuit in Tafas IV did not discuss its previous decision 
in Cooper Technologies. Thus, the Federal Circuit's decision in Tafas 
IV cannot reasonably be viewed as casting doubt on its prior statement 
in Cooper Technologies that 5 U.S.C. 553, and thus 35 U.S.C. 
2(b)(2)(B), does not require notice and comment rulemaking for 
``interpretative rules, general statements of policy, or rules of 
agency organization, procedure, or practice.'' See Cooper Techs., 536 
F.3d at 1336-37; see also Mikkilineni v. Stoll, 410 Fed. Appx. 311, 313 
(Fed. Cir. 2010) (Office's 2009 guidelines concerning 35 U.S.C. 101 are 
interpretive, rather than substantive, and are thus exempt from the 
notice and comment requirements of 5 U.S.C. 553). However, as discussed 
previously, the Office published the proposed changes for comment as it 
sought the benefit of the public's views on the Office's proposed 
implementation of this provision of the AIA.
    The comment also stated that the Office did not make the data 
(statistics, mathematical or computer models, and assumptions, 
including spreadsheets or other models that the Office uses to project 
growth and future filing rates) relied upon in the notice of proposed 
rulemaking publicly available in a rulemaking docket at the time of the 
notice of proposed rulemaking so that the public had fair notice and a 
meaningful opportunity to comment and challenge the data forming the 
basis for the proposed changes in the notice of proposed rulemaking. 
The notice of proposed rulemaking specified the legal authority under 
which the changes were proposed, the basis and purpose of the proposed 
changes, the terms and substance of the proposed rule changes, and a 
description of the subjects and issues involved in the proposed 
changes. See Changes To Implement the First Inventor To File Provisions 
of the Leahy-Smith America Invents Act, 77 FR at 43742-51. The Office 
relied upon the changes to the patent laws in section 3 of the AIA as 
opposed to scientific or technical information or data as the basis or 
reason for the proposed rule changes. The data pertaining to the 
Regulatory Flexibility Act and Paperwork Reduction Act discussion were 
from the Office's PALM system and the basis for the Office estimates 
was stated in the Regulatory Flexibility Act and the Information 
Collection Review submission to OMB (which was made available to the 
public). See Changes To Implement the First Inventor To File Provisions 
of the Leahy-Smith America Invents Act, 77 FR at 43752, and the 
proposed information collection posted on OMB's Information Collection 
Review Web page on July 27, 2012, at https://www.reginfo.gov/public/do/PRAViewICR?ref_nbr=201207-0651-008. The Office relied predominately 
upon the changes to the patent laws in section 3 of the AIA, and not 
these data and estimates published pursuant to the Regulatory 
Flexibility Act and Paperwork Reduction Act, as the basis or reason for 
the proposed changes or changes being adopted in this final rule. The 
public was not deprived of fair notice or a meaningful opportunity to 
comment and challenge any data forming the basis for the proposed 
changes. Also, the issue of a meaningful opportunity to comment and 
challenge data forming the basis for the proposed changes is relevant 
only where there is a requirement for prior notice and opportunity for 
public comment. As discussed previously, prior notice and opportunity 
for public comment are not required pursuant to 5 U.S.C. 553(b) or (c) 
(or any other law).

B. Regulatory Flexibility Act

    As prior notice and an opportunity for public comment are not 
required pursuant to 5 U.S.C. 553 or any other law, neither a 
regulatory flexibility analysis nor a certification under the 
Regulatory Flexibility Act (5 U.S.C. 601 et seq.) is required. See 5 
U.S.C. 603.
    Nevertheless, for the reasons set forth herein, the Deputy General 
Counsel for General Law of the United States Patent and Trademark 
Office has certified to the Chief Counsel for Advocacy of the Small 
Business Administration that the changes in this final rule will not 
have a significant economic impact on a substantial number of small 
entities. See 5 U.S.C. 605(b). As discussed previously, the Office is 
adopting the following changes to address the

[[Page 11048]]

examination issues raised by the changes in section 3 of the AIA.
    The Office is providing for the submission of affidavits or 
declarations showing that: (1) A disclosure upon which a claim 
rejection is based was by the inventor or joint inventor or by another 
who obtained the subject matter disclosed directly or indirectly from 
the inventor or a joint inventor; or (2) there was a prior public 
disclosure by the inventor or a joint inventor or another who obtained 
the subject matter disclosed directly or indirectly from the inventor 
or a joint inventor of an application. The requirements of these 
provisions are comparable to requirements for affidavits and 
declarations under 37 CFR 1.132 for an applicant to show that a prior 
art disclosure is the applicant's own work (see case law cited in MPEP 
sections 716.10 and 2132.01) or that a disclosure was derived from the 
applicant (see case law cited in MPEP section 2137). The changes in 
this final rule will not result in additional small entities being 
subject to the need to submit such an affidavit or declaration.
    The Office is also requiring that the certified copy of the foreign 
application be filed within the later of four months from the actual 
filing date of the application or sixteen months from the filing date 
of the prior foreign application, except if: (1) The priority 
application was filed in a participating foreign intellectual property 
office (or a copy of the foreign application was filed in an 
application subsequently filed in a participating foreign intellectual 
property office) and the Office either receives a copy of the foreign 
application from the participating foreign intellectual property office 
or a certified copy of the foreign application within the pendency of 
the application and before the patent is granted; or (2) the applicant 
provides an interim copy of the original foreign application within the 
later of four months from the actual filing date of the application or 
sixteen months from the filing date of the prior foreign application, 
and files a certified copy of the foreign application within the 
pendency of the application and before the patent is granted.
    An applicant is currently required to file the certified copy of 
the foreign application when deemed necessary by the examiner, but no 
later than the date the patent is granted (see former 37 CFR 1.55(a)). 
The time period of four months from the actual filing date of the 
application or sixteen months from the filing date of the prior foreign 
application should not have a significant economic impact as sixteen 
months from the filing date of the prior foreign application is the 
international norm for when the certified copy of the foreign 
application needs to be filed in an application (PCT Rule 17). In 
addition, this final rule permits applicants to provide an interim copy 
of the original foreign application in the event that the applicant 
cannot obtain a certified copy of the foreign application from the 
foreign patent authority in time to file it within four months from the 
actual filing date of the application or sixteen months from the filing 
date of the prior foreign application. Based upon the data in the 
Office's PALM system, 375,484 (103,976 small entity) nonprovisional 
applications were filed in fiscal year (FY) 2012. Of these, 67,790 
(8,371 small entity) nonprovisional applications claimed priority to a 
foreign priority application, and 68,769 (15,541 small entity) 
nonprovisional applications resulted from the entry of an international 
application into the national stage.
    The Office is also adopting the following requirement for a 
nonprovisional application filed on or after March 16, 2013, that 
claims priority to or the benefit of the filing date of an earlier 
application (i.e., foreign, provisional, or nonprovisional application, 
or international application designating the United States) filed prior 
to March 16, 2013 (a transition application): If a transition 
application contains, or contained at any time, a claim to a claimed 
invention that has an effective filing date on or after March 16, 2013, 
the applicant must provide a statement to that effect within the later 
of four months from the actual filing date of the later-filed 
application, four months from the date of entry into the national stage 
in an international application, sixteen months from the filing date of 
the prior-filed application, or the date that a first claim to a 
claimed invention that has an effective filing date on or after March 
16, 2013, is presented in the application. The Office, however, is also 
providing that an applicant is not required to provide such a statement 
if the applicant reasonably believes on the basis of information 
already known to the individuals designated as having a duty of 
disclosure with respect to the application that the transition 
application does not, and did not at any time, contain a claim to a 
claimed invention that has an effective filing date on or after March 
16, 2013. Thus, an applicant is not required to conduct any additional 
investigation or analysis to determine the effective filing date of the 
claims in their applications.
    Based upon the data in the Office's PALM system, of the 375,484 
(103,976 small entity) nonprovisional applications filed in FY 2012, 
12,246 (7,079 small entity) nonprovisional applications were identified 
as continuation-in-part applications; 59,819 (15,024 small entity) 
nonprovisional applications were identified as continuation 
applications; 22,162 (5,246 small entity) nonprovisional applications 
were identified as divisional applications; and 57,591 (28,200 small 
entity) nonprovisional applications claimed the benefit of provisional 
application. As discussed above, 67,790 (8,371 small entity) 
nonprovisional applications claimed priority to a foreign priority 
application, and 68,769 (15,541 small entity) nonprovisional 
applications resulted from the entry of an international application 
into the national stage. The Office's experience is that the majority 
of nonprovisional applications that claim priority to or the benefit of 
the filing date of an earlier application do not disclose or claim 
subject matter not also disclosed in the earlier application, but the 
Office generally makes such determinations only when necessary to the 
examination of the nonprovisional application. See, e.g., MPEP Sec.  
201.08 (``Unless the filing date of the earlier nonprovisional 
application is actually needed, for example, in the case of an 
interference or to overcome a reference, there is no need for the 
Office to make a determination as to whether the requirement of 35 
U.S.C. 120, that the earlier nonprovisional application discloses the 
invention of the second application in the manner provided by the first 
paragraph of 35 U.S.C. 112, is met and whether a substantial portion of 
all of the earlier nonprovisional application is repeated in the second 
application in a continuation-in-part situation''). In addition, one 
comment indicated that the number of applicants who file applications 
with claims directed to both pre-AIA and AIA subject matter would be 
miniscule. In any event, Office staff with experience and expertise in 
a wide range of patent prosecution matters as patent practitioners 
estimate that this will require, on average, an additional two hours 
for a practitioner who drafted the later-filed application (including 
the claims) and is familiar with the prior foreign, provisional, or 
nonprovisional application.
    Several comments questioned the statement in the notice of proposed 
rulemaking that the changes proposed in the rulemaking will not have a 
significant economic impact on a substantial number of small entities.

[[Page 11049]]

One comment questioned this statement on the basis that the conversion 
of the U.S. patent system from a ``first to invent'' to a ``first 
inventor to file'' system is arguably one of the most comprehensive 
overhauls of the U.S. patent system since its inception. Another 
comment also cited statements by the AIA's legislative sponsors and 
Administration officials and several articles concerning the first 
inventor to file system, and argued that the Office in its 
implementation of the first inventor to file system has ignored a 
number of economic effects, such as: (1) Loss of access to investment 
capital; (2) diversion of inventor time into patent applications; (3) 
weaker patent protection due to hasty filing; (4) higher patent 
prosecution costs due to a hastily-prepared initial application; (5) 
higher abandonment rates; and (6) changes in ways of doing business. 
One comment questioned this statement on the basis of the translation 
costs that will result from the statement required by 37 CFR 1.55.
    Section 3 of the AIA amends the patent laws pertaining to the 
conditions of patentability to convert the U.S. patent system from a 
``first to invent'' system to a ``first inventor to file'' system. This 
final rule does not convert the U.S. patent system from a ``first to 
invent'' to a ``first inventor to file'' system (i.e., the U.S. patent 
system converts from a ``first to invent'' to a ``first inventor to 
file'' system by operation of section 3 of the AIA, regardless of the 
changes that are adopted in this final rule) or even introduce the 
conditions of patentability as provided for in section 3 of the AIA 
into the rules of practice. This final rule merely revises the rules of 
practice in patent cases for consistency with, and to address the 
examination issues raised by, the changes in section 3 of the AIA. 
Thus, the discussions of the significance or impacts of section 3 of 
the AIA by the AIA's legislative sponsors and Administration officials, 
in articles concerning the first inventor to file system, and in the 
discussions in the comment relating to the impacts of the adoption of a 
first inventor to file system pertain to the changes to the conditions 
of patentability provided for in section 3 of the AIA and are not 
pertinent to the changes being adopted in this final rule. This final 
rule: (1) Requires applicants to provide a statement if a 
nonprovisional application filed on or after March 16, 2013, claims 
priority to or the benefit of the filing date of an earlier application 
(i.e., foreign, provisional, or nonprovisional application, or an 
international application designating the United States of America), 
filed prior to March 16, 2013, and also contains, or contained at any 
time, a claim to a claimed invention that has an effective filing date 
on or after March 16, 2013; (2) provides that an applicant may be 
required to identify the inventorship and ownership or obligation to 
assign ownership, of each claimed invention on its effective filing 
date or on its date of invention, as applicable, in an application or 
patent with more than one named joint inventor, when necessary for 
purposes of an Office proceeding; and (3) provides a mechanism for an 
applicant to show that a disclosure was by the inventor or joint 
inventor, or was by another who obtained the subject matter from the 
inventor or a joint inventor, or that there was a prior public 
disclosure by the inventor or a joint inventor, or by another who 
obtained the subject matter from the inventor or a joint inventor. For 
the reasons discussed previously, the changes that are being adopted in 
this final rule will not have a significant economic impact on a 
substantial number of small entities.
    The change to 37 CFR 1.55 will not result in translation costs for 
applicants that would not otherwise exist for applicants claiming 
priority to a non-English-language application. Initially, a 
nonprovisional application claiming priority to a foreign application 
could not be competently prepared without an understanding of the 
subject matter disclosed in the foreign application, as a claim in a 
nonprovisional is entitled to the benefit of a foreign priority date 
only if the foreign application supports the claims in the manner 
required by 35 U.S.C. 112(a). See In re Gosteli, 872 F.2d 1008 (Fed. 
Cir. 1989). Thus, it is not clear how this requirement would result in 
the need for translations not otherwise necessary to competently 
prepare a nonprovisional application that claims priority to a foreign 
application. Nevertheless, the changes to 37 CFR 1.55 will not increase 
translation costs over what these costs would be in the absence of such 
a requirement. Pre-existing 35 U.S.C. 119(b)(3) and 37 CFR 1.55 provide 
that the Office may require a translation of any non-English-language 
priority application when deemed necessary by the examiner. The 
examiner would need to require a translation in all nonprovisional 
applications filed on or after March 16, 2013, that claim priority to a 
non-English-language application that was filed prior to March 16, 
2013, to determine whether AIA or pre-AIA 35 U.S.C. 102 and 103 apply 
to the application in the absence of information from the applicant.
    In addition, it should be noted that a small business concern for 
purposes of Regulatory Flexibility Act analysis is a business or other 
concern that: (1) Meets the SBA's definition of a ``business concern or 
concern'' set forth in 13 CFR 121.105; and (2) meets the size standards 
set forth in 13 CFR 121.802 for the purpose of paying reduced patent 
fees. See Business Size Standard for Purposes of United States Patent 
and Trademark Office Regulatory Flexibility Analysis for Patent-Related 
Regulations, 71 FR 67109, 67112 (Nov. 20, 2006). 13 CFR 121.105 defines 
a business or other concern as a business entity organized for profit, 
with a place of business located in the United States, and which 
operates primarily within the United States or which makes a 
significant contribution to the U.S. economy through payment of taxes 
or use of American products, materials, or labor. See 37 CFR 
121.105(a)(1).
    Accordingly, the changes in this final rule will not have a 
significant economic impact on a substantial number of small entities.

C. Executive Order 12866 (Regulatory Planning and Review

    This rulemaking has been determined to be significant for purposes 
of Executive Order 12866 (Sept. 30, 1993). Several comments suggested 
that this rulemaking should be designated as ``economically 
significant'' under Executive Order 12866. The comments argued that the 
notice of proposed rulemaking indicates that the paperwork burden alone 
would be over $100,000,000 per year. One comment (discussed previously) 
also cited statements by the AIA's legislative sponsors and 
Administration officials and several articles concerning the first 
inventor to file system, and argued that the first inventor to file 
system will result in: (1) Loss of access to investment capital; (2) 
diversion of inventor time into patent applications; (3) weaker patent 
protection due to hasty filing; (4) higher patent prosecution costs due 
to a hastily prepared initial application; (5) higher abandonment 
rates; and (6) changes in ways of doing business.
    The notice of proposed rulemaking indicated that this rulemaking 
has been determined to be significant for purposes of Executive Order 
12866, but that this rulemaking is not economically significant as that 
term is defined in Executive Order 12866. See Changes To Implement the 
First Inventor To File Provisions of the Leahy-Smith America Invents 
Act, 77 FR at 43743 (``This

[[Page 11050]]

rulemaking is not economically significant as that term is defined in 
Executive Order 12866''), and 43752 (``This rulemaking has been 
determined to be significant for purposes of Executive Order 12866'').
    The Paperwork Reduction Act information provided with the notice of 
proposed rulemaking indicated that the majority of the burden hour 
costs pertain to affidavits and declarations under 37 CFR 1.131 and 
1.132, which are provided for in pre-existing regulations to overcome 
rejections under pre-AIA 35 U.S.C. 102 and 103. See Changes To 
Implement the First Inventor To File Provisions of the Leahy-Smith 
America Invents Act, 77 FR at 43753 (``[t]he collection of information 
submitted to OMB under OMB control number 0651-00xx also includes 
information collections (e.g., affidavits and declarations under 37 CFR 
1.130, 1.131, and 1.132) previously approved and currently being 
reviewed under OMB control number 0651-0031''). While the Office is 
providing for the filing of affidavits and declarations under AIA 35 
U.S.C. 102(b) in new 37 CFR 1.130, the change from pre-AIA 35 U.S.C. 
102 to AIA 35 U.S.C. 102 will not result in an increase in affidavits 
and declarations under 37 CFR 1.130, 1.131 and 1.132. Rather, the 
change from pre-AIA 35 U.S.C. 102 to AIA 35 U.S.C. 102 should result in 
a decrease in such affidavits and declarations as well as a decrease in 
the burden hours associated with such affidavits and declarations. In 
any event, there are no instances in which an applicant needs to file 
an affidavit and declaration under 37 CFR 1.130 in an AIA application 
where the applicant would not have needed to file an affidavit and 
declaration under 37 CFR 1.131 or under 37 CFR 1.132 in the same 
situation in a pre-AIA application. Moreover, the information required 
for an affidavit and declaration under 37 CFR 1.130 in an AIA 
application to show that a disclosure is the inventor's own work or a 
prior disclosure of inventor's own work is significantly less than the 
proofs required to show prior invention in a pre-AIA application. Also, 
the requirement for a statement in certain applications claiming 
priority to or the benefit of a prior foreign, provisional, or 
nonprovisional application, or international application designating 
the United States of America, will not be an ``annual'' impact. A 
nonprovisional application claiming priority to or the benefit of a 
foreign or provisional application must be filed not later than twelve 
months from the filing date of the foreign or provisional application. 
See 35 U.S.C. 119(a) and (e). Thus, a statement should not be required 
in any application filed after March 16, 2014, unless the application 
is itself a continuation-in-part application. In any event, to avoid 
underestimating the respondent estimate for this requirement, the 
Paperwork Reduction Act estimate is based upon all applications filed 
in a fiscal year that claim priority to or the benefit of a prior 
foreign, provisional, or nonprovisional application, or international 
application designating the United States of America. The statement, 
however, is not required unless the application actually claims an 
invention with an effective filing date on or after March 16, 2013. 
Thus, the Paperwork Reduction Act burden hour cost estimates pertaining 
to these statements overestimate the actual impact of this requirement.
    Finally, as discussed previously, this final rule does not convert 
the U.S. patent system from a ``first to invent'' to a ``first inventor 
to file'' system. The U.S. patent system converts from a ``first to 
invent'' to a ``first inventor to file'' system by operation of section 
3 of the AIA regardless of the changes that are adopted in this final 
rule. This final rule merely revises the rules of practice in patent 
cases for consistency with, and to address the examination issues 
raised by, the changes in section 3 of the AIA. Thus, the discussions 
of the significance or impact of section 3 of the AIA by the AIA's 
legislative sponsors and Administration officials, in articles 
concerning the first inventor to file system, and in the discussion in 
the comment relating to the impacts of the adoption of a first inventor 
to file system pertain to the changes in section 3 of the AIA per se 
and not to the changes being adopted in this final rule.

D. Executive Order 13563 (Improving Regulation and Regulatory Review)

    The Office has complied with Executive Order 13563. Specifically, 
the Office has, to the extent feasible and applicable: (1) Made a 
reasoned determination that the benefits justify the costs of the rule; 
(2) tailored the rule to impose the least burden on society consistent 
with obtaining the regulatory objectives; (3) selected a regulatory 
approach that maximizes net benefits; (4) specified performance 
objectives; (5) identified and assessed available alternatives; (6) 
involved the public in an open exchange of information and perspectives 
among experts in relevant disciplines, affected stakeholders in the 
private sector, and the public as a whole, and provided on-line access 
to the rulemaking docket; (7) attempted to promote coordination, 
simplification, and harmonization across government agencies and 
identified goals designed to promote innovation; (8) considered 
approaches that reduce burdens and maintain flexibility and freedom of 
choice for the public; and (9) ensured the objectivity of scientific 
and technological information and processes.

E. Executive Order 13132 (Federalism)

    This rulemaking does not contain policies with federalism 
implications sufficient to warrant preparation of a Federalism 
Assessment under Executive Order 13132 (Aug. 4, 1999).

F. Executive Order 13175 (Tribal Consultation)

    This rulemaking will not: (1) Have substantial direct effects on 
one or more Indian tribes; (2) impose substantial direct compliance 
costs on Indian tribal governments; or (3) preempt tribal law. 
Therefore, a tribal summary impact statement is not required under 
Executive Order 13175 (Nov. 6, 2000).

G. Executive Order 13211 (Energy Effects)

    This rulemaking is not a significant energy action under Executive 
Order 13211 because this rulemaking is not likely to have a significant 
adverse effect on the supply, distribution, or use of energy. 
Therefore, a Statement of Energy Effects is not required under 
Executive Order 13211 (May 18, 2001).

H. Executive Order 12988 (Civil Justice Reform)

    This rulemaking meets applicable standards to minimize litigation, 
eliminate ambiguity, and reduce burden as set forth in sections 3(a) 
and 3(b)(2) of Executive Order 12988 (Feb. 5, 1996).

I. Executive Order 13045 (Protection of Children)

    This rulemaking does not concern an environmental risk to health or 
safety that may disproportionately affect children under Executive 
Order 13045 (Apr. 21, 1997).

J. Executive Order 12630 (Taking of Private Property)

    This rulemaking will not effect a taking of private property or 
otherwise have taking implications under Executive Order 12630 (Mar. 
15, 1988).

K. Congressional Review Act

    Under the Congressional Review Act provisions of the Small Business 
Regulatory Enforcement Fairness Act of 1996 (5 U.S.C. 801 et seq.), 
prior to issuing any final rule, the United States Patent and Trademark 
Office will

[[Page 11051]]

submit a report containing the final rule and other required 
information to the United States Senate, the United States House of 
Representatives, and the Comptroller General of the Government 
Accountability Office. The changes in this notice are not expected to 
result in an annual effect on the economy of 100 million dollars or 
more, a major increase in costs or prices, or significant adverse 
effects on competition, employment, investment, productivity, 
innovation, or the ability of United States-based enterprises to 
compete with foreign-based enterprises in domestic and export markets. 
Therefore, this notice is not expected to result in a ``major rule'' as 
defined in 5 U.S.C. 804(2).

L. Unfunded Mandates Reform Act of 1995

    The changes set forth in this notice do not involve a Federal 
intergovernmental mandate that will result in the expenditure by State, 
local, and tribal governments, in the aggregate, of 100 million dollars 
(as adjusted) or more in any one year, or a Federal private sector 
mandate that will result in the expenditure by the private sector of 
100 million dollars (as adjusted) or more in any one year, and will not 
significantly or uniquely affect small governments. Therefore, no 
actions are necessary under the provisions of the Unfunded Mandates 
Reform Act of 1995. See 2 U.S.C. 1501 et seq.

M. National Environmental Policy Act

    This rulemaking will not have any effect on the quality of the 
environment and is thus categorically excluded from review under the 
National Environmental Policy Act of 1969. See 42 U.S.C. 4321 et seq.

N. National Technology Transfer and Advancement Act

    The requirements of section 12(d) of the National Technology 
Transfer and Advancement Act of 1995 (15 U.S.C. 272 note) are not 
applicable because this rulemaking does not contain provisions which 
involve the use of technical standards.

O. Paperwork Reduction Act

    The Paperwork Reduction Act of 1995 (44 U.S.C. 3501 et seq.) 
requires that the Office consider the impact of paperwork and other 
information collection burdens imposed on the public. This rulemaking 
involves information collection requirements which are subject to 
review by the Office of Management and Budget (OMB) under the Paperwork 
Reduction Act of 1995 (44 U.S.C. 3501-3549). The collection of 
information involved in this notice was submitted to OMB for its review 
and approval when the notice of proposed rulemaking was published, and 
was reviewed and preapproved by OMB under OMB control number 0651-0071 
on September 12, 2012. The collection of information submitted to OMB 
also included an information collection (i.e., affidavits and 
declarations under 37 CFR 1.130, 1.131, and 1.132) previously approved 
and currently being reviewed under OMB control number 0651-0031. The 
proposed collection is available at OMB's Information Collection Review 
Web site (www.reginfo.gov/public/do/PRAMain).
    The Office also published the title, description, and respondent 
description of the information collection, with an estimate of the 
annual reporting burdens, in the notice of proposed rulemaking, and 
indicated that any comments on this information must be submitted by 
September 24, 2012. See Changes To Implement the First Inventor To File 
Provisions of the Leahy-Smith America Invents Act, 77 FR at 43753-54. 
The Office received a comment on the proposed information collection 
suggesting that the notice of proposed rulemaking fails to comply with 
numerous provisions of the Paperwork Reduction Act. The comment 
specifically suggested that: (1) The Office did not submit a proposed 
information collection for the notice of proposed rulemaking and the 
information provided in the notice of proposed rulemaking does not 
supply transparent specific burden estimates (e.g., number of 
responses, hours per response, hourly rate, and the underlying 
objective support), to permit public comment; (2) the notice of 
proposed rulemaking has immense ripple effects in the information to be 
collected under OMB control numbers 0651-0031 (patent processing, 
updating) and 0651-0032 (initial applications) as the number of newly 
filed patent applications is almost certain to increase due to the 
ripple effects of the AIA, and requires ``extensive'' ``adjusting [of] 
the existing ways to comply with any previously applicable instructions 
and requirements;'' and (3) the Office is creating new collections of 
information rather than updating existing OMB information collections 
under control numbers OMB 0651-0031 and 0651-0032.
    The Office submitted a proposed information collection for the 
notice of proposed rulemaking providing the specific burden estimates 
(e.g., number of responses, hours per response, hourly rate) for each 
individual information collection item and the Office's basis for these 
estimates. The proposed information collection was posted on OMB's 
Information Collection Review Web page on July 27, 2012 (at https://www.reginfo.gov/public/do/PRAViewICR?ref_nbr=201207-0651-008).
    The collection of information submitted to OMB with the notice of 
proposed rulemaking pertains to the impact resulting from the changes 
being proposed by the Office in this rulemaking. The changes in this 
rulemaking have no impact on the information to be collected under OMB 
control numbers 0651-0031 (patent processing, updating) and 0651-0032 
(initial applications). As discussed previously, this final rule does 
not convert the U.S. patent system from a ``first to invent'' to a 
``first inventor to file'' system. The U.S. patent system converts from 
a ``first to invent'' to a ``first inventor to file'' system by 
operation of section 3 of the AIA regardless of the changes that are 
adopted in this final rule. Section 3 of the AIA amends the patent laws 
pertaining to the conditions of patentability to convert the U.S. 
patent system from a ``first to invent'' system to a ``first inventor 
to file'' system. This final rule merely revises the rules of practice 
in patent cases for consistency with, and to address the examination 
issues raised by, the changes in section 3 of the AIA. The changes 
being adopted in this final rule do not require any ``extensive'' 
``adjusting [of] the existing ways to comply with any previously 
applicable instructions and requirements.''
    Finally, the Paperwork Reduction Act does not prohibit the creation 
of a new collection of information (rather than updating existing OMB 
information collections) to implement a new program. Creation of a new 
collection of information for review and approval by OMB when 
implementing a new program having Paperwork Reduction Act implications 
is an option for agencies to use at their discretion.
    This final rule contains provisions for applicants to: (1) Provide 
a statement if a nonprovisional application filed on or after March 16, 
2013, claims priority to or the benefit of the filing date of an 
earlier application (i.e., foreign, provisional, or nonprovisional 
application, or an international application designating the United 
States of America), filed prior to March 16, 2013, and also contains, 
or contained at any time, a claim to a claimed invention that has an 
effective filing date on or after March 16, 2013; (2) identify the 
inventorship and ownership or obligation to assign ownership, of each 
claimed invention

[[Page 11052]]

on its effective filing date or on its date of invention, as 
applicable, in an application or patent with more than one named joint 
inventor, when necessary for purposes of an Office proceeding; and (3) 
show that a disclosure was by the inventor or joint inventor, or was by 
another who obtained the subject matter from the inventor or a joint 
inventor, or that there was a prior public disclosure by the inventor 
or a joint inventor, or by another who obtained the subject matter from 
the inventor or a joint inventor.
    The Office will use the statement that a nonprovisional application 
filed on or after March 16, 2013, that claims priority to or the 
benefit of the filing date of an earlier application (i.e., foreign, 
provisional, or nonprovisional application, or international 
application designating the United States of America), filed prior to 
March 16, 2013, contains, or contained at any time, a claim to a 
claimed invention that has an effective filing date on or after March 
16, 2013, to readily determine whether the nonprovisional application 
is subject to the changes to 35 U.S.C. 102 and 103 in the AIA. The 
Office will use the identification of the inventorship and ownership or 
obligation to assign ownership, of each claimed invention on its 
effective filing date (as defined in 37 CFR 1.109), or on its date of 
invention, as applicable, when it is necessary to determine whether a 
U.S. patent or U.S. patent application publication resulting from 
another nonprovisional application qualifies as prior art under AIA 35 
U.S.C. 102(a)(2) or pre-AIA 35 U.S.C. 102(e). The Office will use 
information concerning whether a disclosure was by the inventor or 
joint inventor, or was by another who obtained the subject matter from 
the inventor or a joint inventor, or that there was a prior public 
disclosure by the inventor or a joint inventor, or by another who 
obtained the subject matter from the inventor or a joint inventor, to 
determine whether the disclosure qualifies as prior art under AIA 35 
U.S.C. 102(a)(1) or (a)(2).
    The Office is not resubmitting the proposed information collection 
requirements under 0651-0071 to OMB. The Office will accept OMB's 
September 12, 2012 preapproval. The proposed information collection 
requirements under 0651-0071 remain available at the OMB's Information 
Collection Review Web site (www.reginfo.gov/public/do/PRAMain).
    Notwithstanding any other provision of law, no person is required 
to respond to, nor shall a person be subject to a penalty for failure 
to comply with, a collection of information subject to the requirements 
of the Paperwork Reduction Act, unless that collection of information 
displays a currently valid OMB control number.

List of Subjects in 37 CFR Part 1

    Administrative practice and procedure, Courts, Freedom of 
information, Inventions and patents, Reporting and recordkeeping 
requirements, Small businesses.

    For the reasons stated in the preamble, the 37 CFR part 1 is 
amended as follows:

PART 1--RULES OF PRACTICE IN PATENT CASES

0
1. The authority citation for 37 CFR part 1 continues to read as 
follows:

    Authority:  35 U.S.C. 2(b)(2).


0
2. Section 1.9 is amended by adding paragraphs (d), (e), and (f) to 
read as follows:


Sec.  1.9  Definitions.

* * * * *
    (d)(1) The term inventor or inventorship as used in this chapter 
means the individual or, if a joint invention, the individuals 
collectively who invented or discovered the subject matter of the 
invention.
    (2) The term joint inventor or coinventor as used in this chapter 
means any one of the individuals who invented or discovered the subject 
matter of a joint invention.
    (e) The term joint research agreement as used in this chapter means 
a written contract, grant, or cooperative agreement entered into by two 
or more persons or entities for the performance of experimental, 
developmental, or research work in the field of the claimed invention.
    (f) The term claimed invention as used in this chapter means the 
subject matter defined by a claim in a patent or an application for a 
patent.
* * * * *

0
3. Section 1.14 is amended by revising paragraph (f) to read as 
follows:


Sec.  1.14  Patent applications preserved in confidence.

* * * * *
    (f) Notice to inventor of the filing of an application. The Office 
may publish notice in the Official Gazette as to the filing of an 
application on behalf of an inventor by a person who otherwise shows 
sufficient proprietary interest in the matter.
* * * * *

0
4. Section 1.17 is amended by revising paragraphs (g) and (i) and 
removing and reserving paragraphs (n) and (o).
    The revisions read as follows:


Sec.  1.17   Patent application and reexamination processing fees.

* * * * *
    (g) For filing a petition under one of the following sections which 
refers to this paragraph: $200.00
    Sec.  1.12--for access to an assignment record.
    Sec.  1.14--for access to an application.
    Sec.  1.46--for filing an application on behalf of an inventor by a 
person who otherwise shows sufficient proprietary interest in the 
matter.
    Sec.  1.55(f)--for filing a belated certified copy of a foreign 
application.
    Sec.  1.59--for expungement of information.
    Sec.  1.103(a)--to suspend action in an application.
    Sec.  1.136(b)--for review of a request for extension of time when 
the provisions of Sec.  1.136(a) are not available.
    Sec.  1.377--for review of decision refusing to accept and record 
payment of a maintenance fee filed prior to expiration of a patent.
    Sec.  1.550(c)--for patent owner requests for extension of time in 
ex parte reexamination proceedings.
    Sec.  1.956--for patent owner requests for extension of time in 
inter partes reexamination proceedings.
    Sec.  5.12--for expedited handling of a foreign filing license.
    Sec.  5.15--for changing the scope of a license.
    Sec.  5.25--for retroactive license.
* * * * *
    (i) Processing fee for taking action under one of the following 
sections which refers to this paragraph: $130.00
    Sec.  1.28(c)(3)--for processing a non-itemized fee deficiency 
based on an error in small entity status.
    Sec.  1.41(b)--for supplying the name or names of the inventor or 
joint inventors in an application without either an application data 
sheet or the inventor's oath or declaration, except in provisional 
applications.
    Sec.  1.48--for correcting inventorship, except in provisional 
applications.
    Sec.  1.52(d)--for processing a nonprovisional application filed 
with a specification in a language other than English.
    Sec.  1.53(c)(3)--to convert a provisional application filed under 
Sec.  1.53(c) into a nonprovisional application under Sec.  1.53(b).
    Sec.  1.55--for entry of a priority claim or certified copy of a 
foreign application after payment of the issue fee.
    Sec.  1.71(g)(2)--for processing a belated amendment under Sec.  
1.71(g).
    Sec.  1.103(b)--for requesting limited suspension of action, 
continued

[[Page 11053]]

prosecution application for a design patent (Sec.  1.53(d)).
    Sec.  1.103(c)--for requesting limited suspension of action, 
request for continued examination (Sec.  1.114).
    Sec.  1.103(d)--for requesting deferred examination of an 
application.
    Sec.  1.217--for processing a redacted copy of a paper submitted in 
the file of an application in which a redacted copy was submitted for 
the patent application publication.
    Sec.  1.221--for requesting voluntary publication or republication 
of an application.
    Sec.  1.291(c)(5)--for processing a second or subsequent protest by 
the same real party in interest.
    Sec.  3.81--for a patent to issue to assignee, assignment submitted 
after payment of the issue fee.
* * * * *

0
5. Section 1.53 is amended by:
0
a. Revising paragraphs (b) introductory text and (c)(2)(ii) and (iii);
0
b. Removing paragraph (c)(2)(iv);
0
c. Revising paragraph (c)(4); and
0
d. Removing paragraph (j).
    The revisions read as follows:


Sec.  1.53  Application number, filing date, and completion of 
application.

* * * * *
    (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 Sec.  1.71 and at least 
one claim pursuant to Sec.  1.75, and any drawing required by Sec.  
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 Sec.  1.78(c) and (d).
* * * * *
    (c) * * *
    (2) * * *
    (ii) Payment of the issue fee on the application filed under 
paragraph (b) of this section; or
    (iii) Expiration of twelve months after the filing date of the 
application filed under paragraph (b) 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 Sec.  1.55, or to the benefit 
of an earlier filing date under 35 U.S.C. 120, 121, or 365(c) or Sec.  
1.78 of any other application. No claim for priority under 35 U.S.C. 
119(e) or Sec.  1.78(a) may be made in a design application based on a 
provisional application. The requirements of Sec. Sec.  1.821 through 
1.825 regarding application disclosures containing nucleotide and/or 
amino acid sequences are not mandatory for provisional applications.
* * * * *

0
6. Section 1.55 is revised to read as follows:


Sec.  1.55  Claim for foreign priority.

    (a) In general. An applicant in a nonprovisional application may 
claim priority to one or more prior foreign applications under the 
conditions specified in 35 U.S.C. 119(a) through (d) and (f), 172, and 
365(a) and (b) and this section.
    (b) Time for filing subsequent application. The nonprovisional 
application must be filed not later than twelve months (six months in 
the case of a design application) after the date on which the foreign 
application was filed, or be entitled to claim the benefit under 35 
U.S.C. 120, 121, or 365(c) of an application that was filed not later 
than twelve months (six months in the case of a design application) 
after the date on which the foreign application was filed. The twelve-
month period is subject to 35 U.S.C. 21(b) (and Sec.  1.7(a)) and PCT 
Rule 80.5, and the six-month period is subject to 35 U.S.C. 21(b) (and 
Sec.  1.7(a)).
    (c) Time for filing priority claim and certified copy of foreign 
application in an application entering the national stage under 35 
U.S.C. 371. In an international application entering the national stage 
under 35 U.S.C., the claim for priority must be made and a certified 
copy of the foreign application must be filed within the time limit set 
forth in the PCT and the Regulations under the PCT.
    (d) Time for filing priority claim in an application filed under 35 
U.S.C. 111(a). In an original application filed under 35 U.S.C. 111(a), 
the claim for priority must be filed within the later of four months 
from the actual filing date of the application or sixteen months from 
the filing date of the prior foreign application. The claim for 
priority must be presented in an application data sheet (Sec.  
1.76(b)(6)), and must identify the foreign application for which 
priority is claimed, by specifying the application number, country (or 
intellectual property authority), day, month, and year of its filing. 
The time period in this paragraph does not apply in a design 
application.
    (e) Delayed priority claim in an application filed under 35 U.S.C. 
111(a). Unless such claim is accepted in accordance with the provisions 
of this paragraph, any claim for priority under 35 U.S.C. 119(a) 
through (d) or (f) or 365(a) in an original application filed under 35 
U.S.C. 111(a) not presented in an application data sheet (Sec.  
1.76(b)(6)) within the time period provided by paragraph (d) of this 
section is considered to have been waived. If a claim for priority is 
presented after the time period provided by paragraph (d) of this 
section, the claim may be accepted if the priority claim was 
unintentionally delayed. A petition to accept a delayed claim for 
priority under 35 U.S.C. 119(a) through (d) or (f) or 365(a) must be 
accompanied by:
    (1) The priority claim under 35 U.S.C. 119(a) through (d) or (f) or 
365(a) in an application data sheet (Sec.  1.76(b)(6)), identifying the 
foreign application for which priority is claimed, by specifying the 
application number, country (or intellectual property authority), day, 
month, and year of its filing, unless previously submitted;
    (2) A certified copy of the foreign application if required by 
paragraph (f) of this section, unless previously submitted;
    (3) The surcharge set forth in Sec.  1.17(t); and
    (4) A statement that the entire delay between the date the priority 
claim was due under paragraph (d) of this section and the date the 
priority claim was filed was unintentional. The Director may require 
additional information where there is a question whether the delay was 
unintentional.
    (f) Time for filing certified copy of foreign application in an 
application filed under 35 U.S.C. 111(a). In an original application 
filed under 35 U.S.C. 111(a), a certified copy of the foreign 
application must be filed within the later of four months from the 
actual filing date of the application or sixteen months from the filing 
date of the prior foreign application, except as provided in paragraphs 
(h) and (i) of this section. If a certified copy of the foreign 
application is not filed within the later of four months from the 
actual filing date of the application or sixteen months from the filing 
date of the prior foreign application, and the exceptions in paragraphs 
(h) and (i) of this section are not applicable, the certified copy of 
the foreign application must be accompanied by a petition including a 
showing of good and sufficient cause for the delay and the petition fee 
set forth in Sec.  1.17(g). The time period in this paragraph does not 
apply in a design application.

[[Page 11054]]

    (g) Requirement for filing priority claim, certified copy of 
foreign application, and translation in any application. (1) The claim 
for priority and the certified copy of the foreign application 
specified in 35 U.S.C. 119(b) or PCT Rule 17 must, in any event, be 
filed within the pendency of the application and before the patent is 
granted. If the claim for priority or the certified copy of the foreign 
application is filed after the date the issue fee is paid, it must also 
be accompanied by the processing fee set forth in Sec.  1.17(i), but 
the patent will not include the priority claim unless corrected by a 
certificate of correction under 35 U.S.C. 255 and Sec.  1.323.
    (2) The Office may require that the claim for priority and the 
certified copy of the foreign application be filed earlier than 
otherwise provided in this section:
    (i) When the application is involved in an interference (see Sec.  
41.202 of this title) or derivation (see part 42 of this title) 
proceeding;
    (ii) When necessary to overcome the date of a reference relied upon 
by the examiner; or
    (iii) When deemed necessary by the examiner.
    (3) An English language translation of a non-English language 
foreign application is not required except:
    (i) When the application is involved in an interference (see Sec.  
41.202 of this title) or derivation (see part 42 of this title) 
proceeding;
    (ii) When necessary to overcome the date of a reference relied upon 
by the examiner; or
    (iii) When specifically required by the examiner.
    (4) If an English language translation of a non-English language 
foreign application is required, it must be filed together with a 
statement that the translation of the certified copy is accurate.
    (h) Foreign intellectual property office participating in a 
priority document exchange agreement. The requirement in paragraphs 
(c), (f), and (g) for a certified copy of the foreign application to be 
filed within the time limit set forth therein will be considered 
satisfied if:
    (1) The foreign application was filed in a foreign intellectual 
property office participating with the Office in a bilateral or 
multilateral priority document exchange agreement (participating 
foreign intellectual property office), or a copy of the foreign 
application was filed in an application subsequently filed in a 
participating foreign intellectual property office that permits the 
Office to obtain such a copy;
    (2) The claim for priority is presented in an application data 
sheet (Sec.  1.76(b)(6)), identifying the foreign application for which 
priority is claimed, by specifying the application number, country (or 
intellectual property authority), day, month, and year of its filing, 
and the applicant provides the information necessary for the 
participating foreign intellectual property office to provide the 
Office with access to the foreign application;
    (3) The copy of the foreign application is received by the Office 
from the participating foreign intellectual property office, or a 
certified copy of the foreign application is filed, within the period 
specified in paragraph (g)(1) of this section; and
    (4) The applicant files a request in a separate document that the 
Office obtain a copy of the foreign application from a participating 
intellectual property office that permits the Office to obtain such a 
copy if the foreign application was not filed in a participating 
foreign intellectual property office but a copy of the foreign 
application was filed in an application subsequently filed in a 
participating foreign intellectual property office that permits the 
Office to obtain such a copy. The request must identify the 
participating intellectual property office and the subsequent 
application by the application number, day, month, and year of its 
filing in which a copy of the foreign application was filed. The 
request must be filed within the later of sixteen months from the 
filing date of the prior foreign application or four months from the 
actual filing date of an application under 35 U.S.C. 111(a), within 
four months from the later of the date of commencement (Sec.  1.491(a)) 
or the date of the initial submission under 35 U.S.C. 371 in an 
application entering the national stage under 35 U.S.C. 371, or with a 
petition under paragraph (e) of this section.
    (i) Interim copy. The requirement in paragraph (f) for a certified 
copy of the foreign application to be filed within the time limit set 
forth therein will be considered satisfied if:
    (1) A copy of the original foreign application clearly labeled as 
``Interim Copy,'' including the specification, and any drawings or 
claims upon which it is based, is filed in the Office together with a 
separate cover sheet identifying the foreign application by specifying 
the application number, country (or intellectual property authority), 
day, month, and year of its filing, and stating that the copy filed in 
the Office is a true copy of the original application as filed in the 
foreign country (or intellectual property authority);
    (2) The copy of the foreign application and separate cover sheet is 
filed within the later of sixteen months from the filing date of the 
prior foreign application or four months from the actual filing date of 
an application under 35 U.S.C. 111(a), or with a petition under 
paragraph (e) of this section; and
    (3) A certified copy of the foreign application is filed within the 
period specified in paragraph (g)(1) of this section.
    (j) Requirements for certain applications filed on or after March 
16, 2013. If a nonprovisional application filed on or after March 16, 
2013, claims priority to a foreign application filed prior to March 16, 
2013, and also contains, or contained at any time, a claim to a claimed 
invention that has an effective filing date on or after March 16, 2013, 
the applicant must provide a statement to that effect within the later 
of four months from the actual filing date of the nonprovisional 
application, four months from the date of entry into the national stage 
as set forth in Sec.  1.491 in an international application, sixteen 
months from the filing date of the prior-filed foreign application, or 
the date that a first claim to a claimed invention that has an 
effective filing date on or after March 16, 2013, is presented in the 
nonprovisional application. An applicant is not required to provide 
such a statement if the applicant reasonably believes on the basis of 
information already known to the individuals designated in Sec.  
1.56(c) that the nonprovisional application does not, and did not at 
any time, contain a claim to a claimed invention that has an effective 
filing date on or after March 16, 2013.
    (k) Inventor's certificates. An applicant in a nonprovisional 
application may under certain circumstances claim priority on the basis 
of one or more applications for an inventor's certificate in a country 
granting both inventor's certificates and patents. To claim the right 
of priority on the basis of an application for an inventor's 
certificate in such a country under 35 U.S.C. 119(d), the applicant 
when submitting a claim for such right as specified in this section, 
must include an affidavit or declaration. The affidavit or declaration 
must include a specific statement that, upon an investigation, he or 
she is satisfied that to the best of his or her knowledge, the 
applicant, when filing the application for the inventor's certificate, 
had the option to file an application for either a patent or an 
inventor's certificate as to the subject matter of the identified claim 
or claims forming the basis for the claim of priority.

[[Page 11055]]

    (l) Time periods not extendable. The time periods set forth in this 
section are not extendable.


0
7. Section 1.71 is amended by revising paragraph (g)(1) to read as 
follows:


Sec.  1.71  Detailed description and specification of the invention.

* * * * *
    (g)(1) The specification may disclose or be amended to disclose the 
names of the parties to a joint research agreement as defined in Sec.  
1.9(e).
* * * * *

0
8. Section 1.76 is amended by revising paragraphs (b)(5) and (6) to 
read as follows:


Sec.  1.76  Application data sheet.

* * * * *
    (b) * * *
    (5) Domestic benefit information. This information includes the 
application number, the filing date, the status (including patent 
number if available), and relationship of each application for which a 
benefit is claimed under 35 U.S.C. 119(e), 120, 121, or 365(c). 
Providing this information in the application data sheet constitutes 
the specific reference required by 35 U.S.C. 119(e) or 120, and Sec.  
1.78.
    (6) Foreign priority information. This information includes the 
application number, country, and filing date of each foreign 
application for which priority is claimed. Providing this information 
in the application data sheet constitutes the claim for priority as 
required by 35 U.S.C. 119(b) and Sec.  1.55.
* * * * *

0
9. Section 1.77 is amended by revising paragraph (b)(2), redesignating 
paragraphs (b)(6) through (12) as paragraphs (b)(7) through (13), and 
adding a new paragraph (b)(6) to read as follows:


Sec.  1.77  Arrangement of application elements.

* * * * *
    (b) * * *
    (2) Cross-reference to related applications.
* * * * *
    (6) Statement regarding prior disclosures by the inventor or a 
joint inventor.
* * * * *

0
10. Section 1.78 is revised to read as follows:


Sec.  1.78  Claiming benefit of earlier filing date and cross-
references to other applications.

    (a) Claims under 35 U.S.C. 119(e) for the benefit of a prior-filed 
provisional application. An applicant in a nonprovisional application, 
other than for a design patent, or an international application 
designating the United States of America may claim the benefit of one 
or more prior-filed provisional applications under the conditions set 
forth in 35 U.S.C. 119(e) and this section.
    (1) The nonprovisional application or international application 
designating the United States of America must be filed not later than 
twelve months after the date on which the provisional application was 
filed, or be entitled to claim the benefit under 35 U.S.C. 120, 121, or 
365(c) of an application that was filed not later than twelve months 
after the date on which the provisional application was filed. This 
twelve-month period is subject to 35 U.S.C. 21(b) (and Sec.  1.7(a)).
    (2) Each prior-filed provisional application must name the inventor 
or a joint inventor named in the later--filed application as the 
inventor or a joint inventor. In addition, each prior-filed provisional 
application must be entitled to a filing date as set forth in Sec.  
1.53(c), and the basic filing fee set forth in Sec.  1.16(d) must have 
been paid for such provisional application within the time period set 
forth in Sec.  1.53(g).
    (3) Any nonprovisional application or international application 
designating the United States of America that claims the benefit of one 
or more prior-filed provisional applications must contain, or be 
amended to contain, a reference to each such prior-filed provisional 
application, identifying it by the provisional application number 
(consisting of series code and serial number). If the later-filed 
application is a nonprovisional application, the reference required by 
this paragraph must be included in an application data sheet (Sec.  
1.76(b)(5)).
    (4) The reference required by paragraph (a)(3) of this section must 
be submitted during the pendency of the later-filed application. If the 
later-filed application is an application filed under 35 U.S.C. 111(a), 
this reference must also be submitted within the later of four months 
from the actual filing date of the later-filed application or sixteen 
months from the filing date of the prior-filed provisional application. 
If the later-filed application is a nonprovisional application entering 
the national stage from an international application under 35 U.S.C. 
371, this reference must also be submitted within the later of four 
months from the date on which the national stage commenced under 35 
U.S.C. 371(b) or (f) in the later-filed international application or 
sixteen months from the filing date of the prior-filed provisional 
application. Except as provided in paragraph (b) of this section, 
failure to timely submit the reference is considered a waiver of any 
benefit under 35 U.S.C. 119(e) of the prior-filed provisional 
application.
    (5) If the prior-filed provisional application was filed in a 
language other than English and both an English-language translation of 
the prior-filed provisional application and a statement that the 
translation is accurate were not previously filed in the prior-filed 
provisional application, the applicant will be notified and given a 
period of time within which to file, in the prior-filed provisional 
application, the translation and the statement. If the notice is mailed 
in a pending nonprovisional application, a timely reply to such a 
notice must include the filing in the nonprovisional application of 
either a confirmation that the translation and statement were filed in 
the provisional application, or an application data sheet eliminating 
the reference under paragraph (a)(3) of this section to the prior-filed 
provisional application, or the nonprovisional application will be 
abandoned. The translation and statement may be filed in the 
provisional application, even if the provisional application has become 
abandoned.
    (6) If a nonprovisional application filed on or after March 16, 
2013, claims the benefit of the filing date of a provisional 
application filed prior to March 16, 2013, and also contains, or 
contained at any time, a claim to a claimed invention that has an 
effective filing date on or after March 16, 2013, the applicant must 
provide a statement to that effect within the later of four months from 
the actual filing date of the nonprovisional application, four months 
from the date of entry into the national stage as set forth in Sec.  
1.491 in an international application, sixteen months from the filing 
date of the prior-filed provisional application, or the date that a 
first claim to a claimed invention that has an effective filing date on 
or after March 16, 2013, is presented in the nonprovisional 
application. An applicant is not required to provide such a statement 
if the applicant reasonably believes on the basis of information 
already known to the individuals designated in Sec.  1.56(c) that the 
nonprovisional application does not, and did not at any time, contain a 
claim to a claimed invention that has an effective filing date on or 
after March 16, 2013.
    (b) Delayed claims under 35 U.S.C. 119(e) for the benefit of a 
prior-filed provisional application. If the reference required by 35 
U.S.C. 119(e) and paragraph (a)(3) of this section is presented in a 
nonprovisional

[[Page 11056]]

application after the time period provided by paragraph (a)(4) of this 
section, the claim under 35 U.S.C. 119(e) for the benefit of a prior-
filed provisional application may be accepted if submitted during the 
pendency of the later-filed application and if the reference 
identifying the prior-filed application by provisional application 
number was unintentionally delayed. A petition to accept an 
unintentionally delayed claim under 35 U.S.C. 119(e) for the benefit of 
a prior-filed provisional application must be accompanied by:
    (1) The reference required by 35 U.S.C. 119(e) and paragraph (a)(3) 
of this section to the prior-filed provisional application, unless 
previously submitted;
    (2) The surcharge set forth in Sec.  1.17(t); and
    (3) A statement that the entire delay between the date the benefit 
claim was due under paragraph (a)(4) of this section and the date the 
benefit claim was filed was unintentional. The Director may require 
additional information where there is a question whether the delay was 
unintentional.
    (c) Claims under 35 U.S.C. 120, 121, or 365(c) for the benefit of a 
prior-filed nonprovisional or international application. An applicant 
in a nonprovisional application (including an international application 
entering the national stage under 35 U.S.C. 371) or an international 
application designating the United States of America may claim the 
benefit of one or more prior-filed copending nonprovisional 
applications or international applications designating the United 
States of America under the conditions set forth in 35 U.S.C. 120, 121, 
or 365(c) and this section.
    (1) Each prior-filed application must name the inventor or a joint 
inventor named in the later-filed application as the inventor or a 
joint inventor. In addition, each prior-filed application must either 
be:
    (i) An international application entitled to a filing date in 
accordance with PCT Article 11 and designating the United States of 
America; or
    (ii) A nonprovisional application under 35 U.S.C. 111(a) that is 
entitled to a filing date as set forth in Sec.  1.53(b) or (d) for 
which the basic filing fee set forth in Sec.  1.16 has been paid within 
the pendency of the application.
    (2) Except for a continued prosecution application filed under 
Sec.  1.53(d), any nonprovisional application, or international 
application designating the United States of America, that claims the 
benefit of one or more prior-filed nonprovisional applications or 
international applications designating the United States of America 
must contain or be amended to contain a reference to each such prior-
filed application, identifying it by application number (consisting of 
the series code and serial number) or international application number 
and international filing date. If the later-filed application is a 
nonprovisional application, the reference required by this paragraph 
must be included in an application data sheet (Sec.  1.76(b)(5)). The 
reference also must identify the relationship of the applications, 
namely, whether the later-filed application is a continuation, 
divisional, or continuation-in-part of the prior-filed nonprovisional 
application or international application.
    (3) The reference required by 35 U.S.C. 120 and paragraph (c)(2) of 
this section must be submitted during the pendency of the later-filed 
application. If the later-filed application is an application filed 
under 35 U.S.C. 111(a), this reference must also be submitted within 
the later of four months from the actual filing date of the later-filed 
application or sixteen months from the filing date of the prior-filed 
application. If the later-filed application is a nonprovisional 
application entering the national stage from an international 
application under 35 U.S.C. 371, this reference must also be submitted 
within the later of four months from the date on which the national 
stage commenced under 35 U.S.C. 371(b) or (f) in the later-filed 
international application or sixteen months from the filing date of the 
prior-filed application. Except as provided in paragraph (d) of this 
section, failure to timely submit the reference required by 35 U.S.C. 
120 and paragraph (c)(2) of this section is considered a waiver of any 
benefit under 35 U.S.C. 120, 121, or 365(c) to the prior-filed 
application. The time periods in this paragraph do not apply in a 
design application.
    (4) The request for a continued prosecution application under Sec.  
1.53(d) is the specific reference required by 35 U.S.C. 120 to the 
prior-filed application. The identification of an application by 
application number under this section is the identification of every 
application assigned that application number necessary for a specific 
reference required by 35 U.S.C. 120 to every such application assigned 
that application number.
    (5) Cross-references to other related applications may be made when 
appropriate (see Sec.  1.14), but cross-references to applications for 
which a benefit is not claimed under title 35, United States Code, must 
not be included in an application data sheet (Sec.  1.76(b)(5)).
    (6) If a nonprovisional application filed on or after March 16, 
2013, claims the benefit of the filing date of a nonprovisional 
application or an international application designating the United 
States of America filed prior to March 16, 2013, and also contains, or 
contained at any time, a claim to a claimed invention that has an 
effective filing date on or after March 16, 2013, the applicant must 
provide a statement to that effect within the later of four months from 
the actual filing date of the later-filed application, four months from 
the date of entry into the national stage as set forth in Sec.  1.491 
in an international application, sixteen months from the filing date of 
the prior-filed application, or the date that a first claim to a 
claimed invention that has an effective filing date on or after March 
16, 2013, is presented in the later-filed application. An applicant is 
not required to provide such a statement if either:
    (i) The application claims the benefit of a nonprovisional 
application in which a statement under Sec.  1.55(j), paragraph (a)(6) 
of this section, or this paragraph that the application contains, or 
contained at any time, a claim to a claimed invention that has an 
effective filing date on or after March 16, 2013 has been filed; or
    (ii) The applicant reasonably believes on the basis of information 
already known to the individuals designated in Sec.  1.56(c) that the 
later filed application does not, and did not at any time, contain a 
claim to a claimed invention that has an effective filing date on or 
after March 16, 2013.
    (d) Delayed claims under 35 U.S.C. 120, 121, or 365(c) for the 
benefit of a prior-filed nonprovisional application or international 
application. If the reference required by 35 U.S.C. 120 and paragraph 
(c)(2) of this section is presented after the time period provided by 
paragraph (c)(3) of this section, the claim under 35 U.S.C. 120, 121, 
or 365(c) for the benefit of a prior-filed copending nonprovisional 
application or international application designating the United States 
of America may be accepted if the reference identifying the prior-filed 
application by application number or international application number 
and international filing date was unintentionally delayed. A petition 
to accept an unintentionally delayed claim under 35 U.S.C. 120, 121, or 
365(c) for the benefit of a prior-filed application must be accompanied 
by:
    (1) The reference required by 35 U.S.C. 120 and paragraph (c)(2) of 
this section to the prior-filed application, unless previously 
submitted;
    (2) The surcharge set forth in Sec.  1.17(t); and
    (3) A statement that the entire delay between the date the benefit 
claim was

[[Page 11057]]

due under paragraph (c)(3) of this section and the date the benefit 
claim was filed was unintentional. The Director may require additional 
information where there is a question whether the delay was 
unintentional.
    (e) Applications containing patentably indistinct claims. Where two 
or more applications filed by the same applicant contain patentably 
indistinct claims, elimination of such claims from all but one 
application may be required in the absence of good and sufficient 
reason for their retention during pendency in more than one 
application.
    (f) Applications or patents under reexamination naming different 
inventors and containing patentably indistinct claims. If an 
application or a patent under reexamination and at least one other 
application naming different inventors are owned by the same person and 
contain patentably indistinct claims, and there is no statement of 
record indicating that the claimed inventions were commonly owned or 
subject to an obligation of assignment to the same person on the 
effective filing date (as defined in Sec.  1.109), or on the date of 
the invention, as applicable, of the later claimed invention, the 
Office may require the applicant to state whether the claimed 
inventions were commonly owned or subject to an obligation of 
assignment to the same person on such date. Even if the claimed 
inventions were commonly owned, or subject to an obligation of 
assignment to the same person on the effective filing date (as defined 
in Sec.  1.109), or on the date of the invention, as applicable, of the 
later claimed invention, the patentably indistinct claims may be 
rejected under the doctrine of double patenting in view of such 
commonly owned or assigned applications or patents under reexamination.
    (g) Time periods not extendable. The time periods set forth in this 
section are not extendable.


0
11. Section 1.84 is amended by revising paragraph (a)(2) introductory 
text to read as follows.


Sec.  1.84  Standards for drawings.

    (a) * * *
    (2) Color. On rare occasions, color drawings may be necessary as 
the only practical medium by which to disclose the subject matter 
sought to be patented in a utility or design patent application. The 
color drawings must be of sufficient quality such that all details in 
the drawings are reproducible in black and white in the printed patent. 
Color drawings are not permitted in international applications (see PCT 
Rule 11.13), or in an application, or copy thereof, submitted under the 
Office electronic filing system. The Office will accept color drawings 
in utility or design patent applications only after granting a petition 
filed under this paragraph explaining why the color drawings are 
necessary. Any such petition must include the following:
* * * * *


Sec.  1.103  [Amended]


0
12. Section 1.103 is amended by removing paragraph (g).
0
13. Section 1.104 is amended by revising paragraphs (c)(4) and (5) and 
adding paragraph (c)(6) to read as follows:


Sec.  1.104  Nature of examination.

    (c) * * *
    (4)(i) Subject matter which would otherwise qualify as prior art 
under 35 U.S.C. 102(a)(2) and a claimed invention will be treated as 
commonly owned for purposes of 35 U.S.C. 102(b)(2)(C) if the applicant 
or patent owner provides a statement to the effect that the subject 
matter and the claimed invention, not later than the effective filing 
date of the claimed invention, were owned by the same person or subject 
to an obligation of assignment to the same person.
    (ii) Subject matter which would otherwise qualify as prior art 
under 35 U.S.C. 102(a)(2) and a claimed invention will be treated as 
commonly owned for purposes of 35 U.S.C. 102(b)(2)(C) on the basis of a 
joint research agreement under 35 U.S.C. 102(c) if:
    (A) The applicant or patent owner provides a statement to the 
effect that the subject matter was developed and the claimed invention 
was made by or on behalf of one or more parties to a joint research 
agreement, within the meaning of 35 U.S.C. 100(h) and Sec.  1.9(e), 
that was in effect on or before the effective filing date of the 
claimed invention, and the claimed invention was made as a result of 
activities undertaken within the scope of the joint research agreement; 
and
    (B) The application for patent for the claimed invention discloses 
or is amended to disclose the names of the parties to the joint 
research agreement.
    (5)(i) Subject matter which qualifies as prior art under 35 U.S.C. 
102(e), (f), or (g) in effect prior to March 16, 2013, and a claimed 
invention in an application filed on or after November 29, 1999, or any 
patent issuing thereon, in an application filed before November 29, 
1999, but pending on December 10, 2004, or any patent issuing thereon, 
or in any patent granted on or after December 10, 2004, will be treated 
as commonly owned for purposes of 35 U.S.C. 103(c) in effect prior to 
March 16, 2013, if the applicant or patent owner provides a statement 
to the effect that the subject matter and the claimed invention, at the 
time the claimed invention was made, were owned by the same person or 
subject to an obligation of assignment to the same person.
    (ii) Subject matter which qualifies as prior art under 35 U.S.C. 
102(e), (f), or (g) in effect prior to March 16, 2013, and a claimed 
invention in an application pending on or after December 10, 2004, or 
in any patent granted on or after December 10, 2004, will be treated as 
commonly owned for purposes of 35 U.S.C. 103(c) in effect prior to 
March 16, 2013, on the basis of a joint research agreement under 35 
U.S.C. 103(c)(2) in effect prior to March 16, 2013, if:
    (A) The applicant or patent owner provides a statement to the 
effect that the subject matter and the claimed invention were made by 
or on behalf of the parties to a joint research agreement, within the 
meaning of 35 U.S.C. 100(h) and Sec.  1.9(e), which was in effect on or 
before the date the claimed invention was made, and that the claimed 
invention was made as a result of activities undertaken within the 
scope of the joint research agreement; and
    (B) The application for patent for the claimed invention discloses 
or is amended to disclose the names of the parties to the joint 
research agreement.
    (6) Patents issued prior to December 10, 2004, from applications 
filed prior to November 29, 1999, are subject to 35 U.S.C. 103(c) in 
effect on November 28, 1999.
* * * * *

0
14. Section 1.109 is added to read as follows:


Sec.  1.109  Effective filing date of a claimed invention under the 
Leahy-Smith America Invents Act.

    (a) The effective filing date for a claimed invention in a patent 
or application for patent, other than in a reissue application or 
reissued patent, is the earliest of:
    (1) The actual filing date of the patent or the application for the 
patent containing a claim to the invention; or
    (2) The filing date of the earliest application for which the 
patent or application is entitled, as to such invention, to a right of 
priority or the benefit of an earlier filing date under 35 U.S.C. 119, 
120, 121, or 365.
    (b) The effective filing date for a claimed invention in a reissue 
application or a reissued patent is determined by deeming the claim to 
the invention to have been contained in the patent for which reissue 
was sought.


[[Page 11058]]



0
15. Section 1.110 is revised to read as follows:


Sec.  1.110  Inventorship and ownership of the subject matter of 
individual claims.

    When one or more joint inventors are named in an application or 
patent, the Office may require an applicant or patentee to identify the 
inventorship and ownership or obligation to assign ownership, of each 
claimed invention on its effective filing date (as defined in Sec.  
1.109) or on its date of invention, as applicable, when necessary for 
purposes of an Office proceeding. The Office may also require an 
applicant or patentee to identify the invention dates of the subject 
matter of each claim when necessary for purposes of an Office 
proceeding.


0
16. Section 1.130 is revised to read as follows:


Sec.  1.130  Affidavit or declaration of attribution or prior public 
disclosure under the Leahy-Smith America Invents Act.

    (a) Affidavit or declaration of attribution. When any claim of an 
application or a patent under reexamination is rejected, the applicant 
or patent owner may submit an appropriate affidavit or declaration to 
disqualify a disclosure as prior art by establishing that the 
disclosure was made by the inventor or a joint inventor, or the subject 
matter disclosed was obtained directly or indirectly from the inventor 
or a joint inventor.
    (b) Affidavit or declaration of prior public disclosure. When any 
claim of an application or a patent under reexamination is rejected, 
the applicant or patent owner may submit an appropriate affidavit or 
declaration to disqualify a disclosure as prior art by establishing 
that the subject matter disclosed had, before such disclosure was made 
or before such subject matter was effectively filed, been publicly 
disclosed by the inventor or a joint inventor or another who obtained 
the subject matter disclosed directly or indirectly from the inventor 
or a joint inventor. An affidavit or declaration under this paragraph 
must identify the subject matter publicly disclosed and provide the 
date such subject matter was publicly disclosed by the inventor or a 
joint inventor or another who obtained the subject matter disclosed 
directly or indirectly from the inventor or a joint inventor.
    (1) If the subject matter publicly disclosed on that date was in a 
printed publication, the affidavit or declaration must be accompanied 
by a copy of the printed publication.
    (2) If the subject matter publicly disclosed on that date was not 
in a printed publication, the affidavit or declaration must describe 
the subject matter with sufficient detail and particularity to 
determine what subject matter had been publicly disclosed on that date 
by the inventor or a joint inventor or another who obtained the subject 
matter disclosed directly or indirectly from the inventor or a joint 
inventor.
    (c) When this section is not available. The provisions of this 
section are not available if the rejection is based upon a disclosure 
made more than one year before the effective filing date of the claimed 
invention. The provisions of this section may not be available if the 
rejection is based upon a U.S. patent or U.S. patent application 
publication of a patented or pending application naming another 
inventor, the patent or pending application claims an invention that is 
the same or substantially the same as the applicant's or patent owner's 
claimed invention, and the affidavit or declaration contends that an 
inventor named in the U.S. patent or U.S. patent application 
publication derived the claimed invention from the inventor or a joint 
inventor named in the application or patent, in which case an applicant 
or a patent owner may file a petition for a derivation proceeding 
pursuant to Sec.  42.401 et seq. of this title.
    (d) Applications and patents to which this section is applicable. 
The provisions of this section apply to any application for patent, and 
to any patent issuing thereon, that contains, or contained at any time:
    (1) A claim to a claimed invention that has an effective filing 
date as defined in 35 U.S.C. 100(i) that is on or after March 16, 2013; 
or
    (2) A specific reference under 35 U.S.C. 120, 121, or 365(c) to any 
patent or application that contains, or contained at any time, a claim 
to a claimed invention that has an effective filing date as defined in 
35 U.S.C. 100(i) that is on or after March 16, 2013.


0
17. Section 1.131 is revised to read as follows:


Sec.  1.131  Affidavit or declaration of prior invention or to 
disqualify commonly owned patent or published application as prior art.

    (a) When any claim of an application or a patent under 
reexamination is rejected, the inventor of the subject matter of the 
rejected claim, the owner of the patent under reexamination, or the 
party qualified under Sec.  1.42 or Sec.  1.46, may submit an 
appropriate oath or declaration to establish invention of the subject 
matter of the rejected claim prior to the effective date of the 
reference or activity on which the rejection is based. The effective 
date of a U.S. patent, U.S. patent application publication, or 
international application publication under PCT Article 21(2) is the 
earlier of its publication date or the date that it is effective as a 
reference under 35 U.S.C. 102(e) as in effect on March 15, 2013. Prior 
invention may not be established under this section in any country 
other than the United States, a NAFTA country, or a WTO member country. 
Prior invention may not be established under this section before 
December 8, 1993, in a NAFTA country other than the United States, or 
before January 1, 1996, in a WTO member country other than a NAFTA 
country. Prior invention may not be established under this section if 
either:
    (1) The rejection is based upon a U.S. patent or U.S. patent 
application publication of a pending or patented application naming 
another inventor which claims interfering subject matter as defined in 
Sec.  41.203(a) of this title, in which case an applicant may suggest 
an interference pursuant to Sec.  41.202(a) of this title; or
    (2) The rejection is based upon a statutory bar.
    (b) The showing of facts for an oath or declaration under paragraph 
(a) of this section shall be such, in character and weight, as to 
establish reduction to practice prior to the effective date of the 
reference, or conception of the invention prior to the effective date 
of the reference coupled with due diligence from prior to said date to 
a subsequent reduction to practice or to the filing of the application. 
Original exhibits of drawings or records, or photocopies thereof, must 
accompany and form part of the affidavit or declaration or their 
absence must be satisfactorily explained.
    (c) When any claim of an application or a patent under 
reexamination is rejected under 35 U.S.C. 103 as in effect on March 15, 
2013, on a U.S. patent or U.S. patent application publication which is 
not prior art under 35 U.S.C. 102(b) as in effect on March 15, 2013, 
and the inventions defined by the claims in the application or patent 
under reexamination and by the claims in the patent or published 
application are not identical but are not patentably distinct, and the 
inventions are owned by the same party, the applicant or owner of the 
patent under reexamination may disqualify the patent or patent 
application publication as prior art. The patent or patent application 
publication can be disqualified as prior art by submission of:
    (1) A terminal disclaimer in accordance with Sec.  1.321(c); and

[[Page 11059]]

    (2) An oath or declaration stating that the application or patent 
under reexamination and patent or published application are currently 
owned by the same party, and that the inventor named in the application 
or patent under reexamination is the prior inventor under 35 U.S.C. 104 
as in effect on March 15, 2013.
    (d) The provisions of this section apply to any application for 
patent, and to any patent issuing thereon, that contains, or contained 
at any time:
    (1) A claim to an invention that has an effective filing date as 
defined in 35 U.S.C. 100(i) that is before March 16, 2013; or
    (2) A specific reference under 35 U.S.C. 120, 121, or 365(c) to any 
patent or application that contains, or contained at any time, a claim 
to an invention that has an effective filing date as defined in 35 
U.S.C. 100(i) that is before March 16, 2013.
    (e) In an application for patent to which the provisions of Sec.  
1.130 apply, and to any patent issuing thereon, the provisions of this 
section are applicable only with respect to a rejection under 35 U.S.C. 
102(g) as in effect on March 15, 2013.


Sec. Sec.  1.293 through 1.297  [Removed and Reserved]


0
18. Sections 1.293 through 1.297 are removed and reserved.
0
19. Section 1.321 is amended by revising paragraph (d) introductory 
text to read as follows:


Sec.  1.321  Statutory disclaimers, including terminal disclaimers.

* * * * *
    (d) A terminal disclaimer, when filed in a patent application or in 
a reexamination proceeding to obviate double patenting based upon a 
patent or application that is not commonly owned but was disqualified 
as prior art as set forth in either Sec.  1.104(c)(4)(ii) or (c)(5)(ii) 
as the result of activities undertaken within the scope of a joint 
research agreement, must:
* * * * *

    Dated: February 11, 2013.
Teresa Stanek Rea,
Acting Under Secretary of Commerce for Intellectual Property and Acting 
Director of the United States Patent and Trademark Office.
[FR Doc. 2013-03453 Filed 2-13-13; 8:45 am]
BILLING CODE 3510-16-P