Title 37, Part 1 — Rules of Practice in Patent Cases

Addresses for non-trademark correspondence with the United States Patent and Trademark Office.

Business to be transacted in writing.

Business to be conducted with decorum and courtesy.

Nature of correspondence and signature requirements.

Identification of patent, patent application, or patent-related proceeding.

Receipt of correspondence.

Times for taking action; Expiration on Saturday, Sunday or Federal holiday.

Certificate of mailing or transmission.

Definitions.

Filing of correspondence by Priority Mail Express®.

Files open to the public.

Assignment records open to public inspection.

Copies and certified copies.

Patent applications preserved in confidence.

[Reserved]

National application filing, search, and examination fees.

Patent application and reexamination processing fees.

Patent post allowance (including issue) fees.

Document supply fees.

Post-issuance fees.

Miscellaneous fees and charges.

Fees payable in advance.

Methods of payment.

[Reserved]

Deposit accounts.

Refunds.

Definition of small entities and establishing status as a small entity to permit payment of small entity fees; when a determination of entitlement to small entity status and notification of loss of entitlement to small entity status are required; fraud on the Office.

Refunds when small entity status is later established; how errors in small entity status are excused.

Micro entity status.

Applicant may be represented by one or more patent practitioners or joint inventors.

Power of attorney.

Correspondence respecting patent applications, patent reexamination proceedings, and other proceedings.

Acting in a representative capacity.

Revocation of power of attorney; withdrawal of patent attorney or agent.

Inventorship.

Applicant for patent.

Application for patent by a legal representative of a deceased or legally incapacitated inventor.

[Reserved]

Application for patent by joint inventors.

Application for patent by an assignee, obligated assignee, or a person who otherwise shows sufficient proprietary interest in the matter.

[Reserved]

Correction of inventorship pursuant to 35 U.S.C. 116 or correction of the name or order of names in a patent application, other than a reissue application.

General requisites of an application.

Language, paper, writing, margins, read-only optical disc specifications.

Application number, filing date, and completion of application.

Parts of application to be filed together; filing receipt.

Claim for foreign priority.

Duty to disclose information material to patentability.

Incorporation by reference.

Chemical and mathematical formulae and tables.

Expungement of information or copy of papers in application file.

§§ 1.60-1.62 [Reserved]

Inventor's oath or declaration.

Substitute statement in lieu of an oath or declaration.

Statements under oath.

Supplemental oath or declaration.

Declaration in lieu of oath.

Foreign language oaths and declarations.

[Reserved]

Detailed description and specification of the invention.

Title and abstract.

Summary of the invention.

Reference to drawings.

Claim(s).

Application data sheet.

Arrangement of application elements.

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

[Reserved]

Drawings required in patent application.

Content of drawing.

Standards for drawings.

Corrections to drawings.

[Reserved]

Models or exhibits not generally admitted as part of application or patent.

[Reserved]

Specimens.

Return of models, exhibits or specimens.

Copies of exhibits.

Submission of computer program listings.

Filing of information disclosure statement.

Content of information disclosure statement.

[Reserved]

[Reserved]

Advancement of examination.

Suspension of action by the Office.

Nature of examination.

Requirements for information.

§§ 1.106-1.108 [Reserved]

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

Inventorship and ownership of the subject matter of individual claims.

Reply by applicant or patent owner to a non-final Office action.

Reconsideration before final action.

Final rejection or action.

Request for continued examination.

Preliminary amendments.

Amendments and affidavits or other evidence after final action and prior to appeal.

§§ 1.117-1.119 [Reserved]

Manner of making amendments in applications.

§§ 1.122-1.224 [Reserved]

Substitute specification.

Numbering of claims.

[Reserved]

Transitional procedures for limited examination after final rejection and restriction practice.

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

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

Affidavits or declarations traversing rejections or objections.

Interviews.

Time period for reply to an Office action.

Abandonment for failure to reply within time period.

Extensions of time.

Revival of abandoned application, or terminated or limited reexamination prosecution.

Express abandonment.

[Reserved]

Different inventions in one national application.

Requirement for restriction.

Reconsideration of requirement.

Petition from requirement for restriction.

Subsequent presentation of claims for different invention.

Election of species.

Rules applicable.

Design drawings.

Title, description and claim, oath or declaration.

Arrangement of application elements in a design application.

[Reserved]

Rules applicable.

Applicant, oath or declaration.

Specification and arrangement of application elements in a plant application.

Claim.

Plant drawings.

Specimens.

Examination.

Application for reissue.

Reissue applicant.

Reissue specification, drawings, and amendments.

[Reserved]

Inventor's oath or declaration for a reissue application.

Examination of reissue.

Issuance of multiple reissue patents.

Original patent; continuing duty of applicant.

[Reserved]

Petition to the Director.

Questions not specifically provided for.

Suspension of rules.

[Reserved]

Appeal to Patent Trial and Appeal Board.

§§ 1.192-1.196 [Reserved]

Termination of proceedings.

Reopening after a final decision of the Patent Trial and Appeal Board.

Publication of applications.

Nonpublication request.

Patent application publication.

Publication of a redacted copy of an application.

Early publication.

Voluntary publication or republication of patent application publication.

Service of papers; manner of service; proof of service in cases other than interferences and trials.

Unlocatable file.

Submissions by third parties in applications.

Protests by the public against pending applications.

§§ 1.292-1.297 [Reserved]

§§ 1.301-1.304 [Reserved]

Notice of allowance.

Amendments after allowance.

Withdrawal from issue.

Issuance of patent.

[Reserved]

Application abandoned for failure to pay issue fee.

§§ 1.317-1.318 [Reserved]

Statutory disclaimers, including terminal disclaimers.

Certificate of correction of Office mistake.

Certificate of correction of applicant's mistake.

Correction of inventorship in patent, pursuant to 35 U.S.C. 256.

Other mistakes not corrected.

§§ 1.331-1.334 [Reserved]

Filing of notice of arbitration awards.

§§ 1.351-1.352 [Reserved]

Time for payment of maintenance fees.

Fee address for maintenance fee purposes.

Submission of maintenance fees.

Review of decision refusing to accept and record payment of a maintenance fee filed prior to expiration of patent.

Acceptance of delayed payment of maintenance fee in expired patent to reinstate patent.

Definitions of terms under the Patent Cooperation Treaty.

The United States Receiving Office.

The United States International Searching Authority.

The United States Patent and Trademark Office as a Designated Office or Elected Office.

The International Bureau.

The United States International Preliminary Examining Authority.

Submission of translation of international publication.

Display of currently valid control number under the Paperwork Reduction Act.

Applicant for international application.

Legal representative as applicant in an international application.

[Reserved]

Assignee, obligated assignee, or person having sufficient proprietary interest as applicant in an international application.

International application requirements.

Designation of States by filing an international application.

Physical requirements of international application.

The request.

The description.

The claims.

The drawings.

The abstract.

International application filing, processing and search fees.

Refund of international application filing and processing fees.

The priority claim and priority document in an international application.

Restoration of right of priority.

Transmittal of documents relating to earlier search or classification.

Representation in international applications.

Procedures for transmittal of record copy to the International Bureau.

Timing of application processing based on the priority date.

Delays in meeting time limits.

Corrections and amendments during international processing.

Changes in person, name, or address of applicants and inventors.

Unity of invention before the International Searching Authority, the International Preliminary Examining Authority and during the national stage.

Determination of unity of invention before the International Searching Authority.

Protest to lack of unity of invention before the International Searching Authority.

Demand for international preliminary examination.

Payment of international preliminary examination fees.

International preliminary examination and processing fees.

Conduct of international preliminary examination.

Amendments by applicant during international preliminary examination.

Determination of unity of invention before the International Preliminary Examining Authority.

Protest to lack of unity of invention before the International Preliminary Examining Authority.

National stage commencement, entry, and fulfillment.

National stage fees.

Entering the national stage in the United States of America.

Examination of international applications in the national stage.

Inventor's oath or declaration under 35 U.S.C. 371(c)(4).

Unity of invention during the national stage.

Citation of prior art and written statements in patent files.

Processing of prior art citations during an reexamination proceeding.

Request for reexamination.

Determination of the request for reexamination.

reexamination at the initiative of the Director.

Order for reexamination.

Statement by patent owner in reexamination; amendment by patent owner in or reexamination; inventorship change in or reexamination.

Reply by third party requester in reexamination.

Consideration of responses in reexamination.

Conduct of reexamination proceedings.

Scope of reexamination in reexamination proceedings.

Information material to patentability in reexamination and reexamination proceedings.

Interviews in reexamination proceedings.

Concurrent office proceedings which include an reexamination proceeding.

Issuance and publication of reexamination certificate concludes reexamination proceeding.

Filing of papers in supplemental examination.

Items of information.

Content of request for supplemental examination.

Format of papers filed in a supplemental examination proceeding.

Conduct of supplemental examination proceeding.

Conclusion of supplemental examination; publication of supplemental examination certificate; procedure after conclusion.

Extension of patent term due to examination delay under the Uruguay Round Agreements Act (original applications, other than designs, filed on or after June 8, 1995, and before May 29, 2000).

Grounds for adjustment of patent term due to examination delay under the Patent Term Guarantee Act of 1999 (original applications, other than designs, filed on or after May 29, 2000).

Period of adjustment of patent term due to examination delay.

Reduction of period of adjustment of patent term.

Patent term adjustment determination.

Patents subject to extension of the patent term.

Conditions for extension of patent term.

Applicant for extension of patent term; signature requirements.

Formal requirements for application for extension of patent term; correction of informalities.

Complete application given a filing date; petition procedure.

Determination of eligibility for extension of patent term.

Interim extension of patent term under 35 U.S.C. 156(e)(2).

Duty of disclosure in patent term extension proceedings.

Express withdrawal of application for extension of patent term.

Calculation of patent term extension for a human drug, antibiotic drug or human biological product.

Calculation of patent term extension for a food additive or color additive.

Calculation of patent term extension for a medical device.

Calculation of patent term extension for an animal drug product.

Calculation of patent term extension for a veterinary biological product.

Certificate or order of extension of patent term.

Multiple applications for extension of term of the same patent or of different patents for the same regulatory review period for a product.

Interim extension of patent term under 35 U.S.C. 156(d)(5).

Termination of interim extension granted prior to regulatory approval of a product for commercial marketing or use.

Biological material.

Need or opportunity to make a deposit.

Acceptable depository.

Time of making an original deposit.

Replacement or supplement of deposit.

Term of deposit.

Viability of deposit.

Furnishing of samples.

Examination procedures.

Nucleotide and/or amino acid sequence disclosures in patent applications.

Symbols and format to be used for nucleotide and/or amino acid sequence data.

Requirements for content of a “Sequence Listing” part of the specification.

Form and format for a nucleotide and/or amino acid sequence submission as an ASCII plain text file.

Amendment to add or replace a “Sequence Listing” and CRF copy thereof.

Requirements for patent applications filed on or after July 1, 2022, having nucleotide and/or amino acid sequence disclosures.

Representation of nucleotide and/or amino acid sequence data in the “Sequence Listing XML” part of a patent application filed on or after July 1, 2022.

Requirements for a “Sequence Listing XML” for nucleotide and/or amino acid sequences as part of a patent application filed on or after July 1, 2022.

Form and format for nucleotide and/or amino acid sequence submissions as the “Sequence Listing XML” in patent applications filed on or after July 1, 2022.

Amendment to add or replace a “Sequence Listing XML” in patent applications filed on or after July 1, 2022.

Incorporation by reference.

Processing of prior art citations during an reexamination proceeding.

Service of papers on parties in reexamination.

Notice of reexamination in

Submission of papers by the public in reexamination.

Scope of reexamination in reexamination proceeding.

reexamination prohibited.

Persons eligible to file, and time for filing, a request for reexamination.

Content of request for reexamination.

Filing date of request for reexamination.

Examiner's determination on the request for reexamination.

Partial refund if request for reexamination is not ordered.

Petition to review refusal to order reexamination.

Order for reexamination.

Patent owner duty of disclosure in reexamination proceedings.

Initial Office action usually accompanies order for reexamination.

Conduct of reexamination.

Unauthorized papers in reexamination.

Amendments by patent owner in reexamination.

Requirements of responses, written comments, and briefs in reexamination.

Response to Office action by patent owner in reexamination.

Comments by third party requester to patent owner's response in reexamination.

Limitations on submission of prior art by third party requester following the order for reexamination.

Examiner's Office action closing prosecution in reexamination.

Options after Office action closing prosecution in reexamination.

Examiner's Right of Appeal Notice in reexamination.

Interviews prohibited in reexamination proceedings.

Patent owner extensions of time in reexamination.

Failure to file a timely, appropriate or complete response or comment in reexamination.

Petition to revive inter partes reexamination prosecution terminated for lack of patent owner response.

Appeal in reexamination.

§§ 1.961-1.977 [Reserved]

Return of Jurisdiction from the Patent Trial and Appeal Board; termination of appeal proceedings.

Reopening after a final decision of the Patent Trial and Appeal Board.

Appeal to the United States Court of Appeals for the Federal Circuit in reexamination.

Notification of prior or concurrent proceedings in reexamination.

Suspension of reexamination proceeding due to litigation.

Merger of concurrent reexamination proceedings.

Merger of concurrent reissue application and reexamination proceeding.

Suspension of concurrent interference and reexamination proceeding.

Third party requester's participation rights preserved in merged proceeding.

Issuance and publication of reexamination certificate concludes reexamination proceeding.

Definitions related to international design applications.

The United States Patent and Trademark Office as an office of indirect filing.

The United States Patent and Trademark Office as a designated office.

The International Bureau.

Display of currently valid control number under the Paperwork Reduction Act.

Applicant for international design application.

Applicant's Contracting Party.

Contents of the international design application.

Form and signature.

Filing date of an international design application in the United States.

The description.

The claim.

Reproductions.

Specimens.

Deferment of publication.

International design application fees.

Representation in an international design application.

Correspondence respecting international design applications filed with the Office as an office of indirect filing.

Procedures for transmittal of international design application to the International Bureau.

Relief from prescribed time limits.

Conversion to a design application under 35 U.S.C. chapter 16.

Rules applicable.

Examination.

Notification of refusal.

One independent and distinct design.

Corrections and other changes in the International Register.

Correspondence address for a nonprovisional international design application.

Title, description, and inventor's oath or declaration.

Statement of grant of protection.

Notification of Invalidation.

Grant of protection for an industrial design only upon issuance of a patent.