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B I T L A W

  S O U R C E:  3 7  C.F.R.  P a t e n t  W o r d  I n d e x

B y   D a n i e l  A.  T y s v e r,  A t t o r n e y  a t  L a w

This document contains the word index found in the M.P.E.P. for patent related parts of Chapter 37 of the Code of Federal Regulations. These materials were adapted from the M.P.E.P. downloaded from the U.S. Patent and Trademark Office web site, and were dated December 1995.

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WORD INDEX - RULES RELATING TO PATENTS

 

| A | B | C | D | E | F | G | H | I | J | K | L | M | N | O | P | Q | R | S | T | U | V | W | X | Y | Z |


A

Abandoned applications:

Abandonment by failure to prosecute 1.135
Abandonment during Interference 1.662(a)
Abandonment for failure to pay issue fee 1.316
Express abandonment 1.138
Not cited 1.108
Processing and retention fee 1.21(1)
Referred to in issued patents 1.14
Revival of 1137, 1.155, 1.316
When open to public inspection 1.14

Abandonment of application. (See also Abandoned applications.) Abstract of the disclosure 1.72
Access, petition for 1.14
Action by applicant 1.111 - 1.138
Address for notice to Commissioner of appeal to Fed. Cir. 1.302(c)
Address of Solicitor's Office 1.1(g)
Address of the Patent and Trademark Office 1.1

Box FWC 1.62(i)
Box Interference 1.1(e)
Box M Fee 1.1(d)
Box Patent Ext 1.1(f)
Box PCT 1.1(b)
Box Reexam 1.1(c)

Administrator or executor,

May make application and receive patent 1.42
Proof of authority 1.44

Admission to practice (See also Attorneys and agents.)
Affidavit (see also Oath in patent applications):

After appeal 1.195
In support of application for reissue 1.175
To overcome cited patent or publication 1.131
Traversing grounds of rejection 1.132

Agents. (See also Attorneys and agents.)
Allowance and issue of patent:

Amendment after allowance 1.312
Traversing grounds of rejection 1.312
Deferral of issuance 1.314
Delayed payment of issue fee 1.155, 1.316, 1.317
Delivery of patent 1.315
Forfeited application 1.155, 1.316
Issuance of patent 1.155, 1.314
Notice of allowance 1.155, 1.311
Patent to issue upon payment of issue fee 1.311, 1.314
Patent to lapse if issue fee is not paid in full 1.317
Patent withheld for nonpayment of issue fee 1.155, 1.316
(Allowance and issue of patent:):
Reasons for 1.109
Withdrawal from issue 1.313

Allowed claims statement of grounds for rejecting by Board of Patent Appeals and Interferences 1.196
Amendment:

Adding or substituting claims 1.119
After appeal 1.116
After decision on appeal, based on new rejection of Board of Patent Appeals and Interferences 1.196
After final action 1.116
After notice of allowance 1.312
By patent owner 1.530
Copying claim of another application for interference 1.603
Copying claim of issued patent 1.606, 1.607
Drawings 1.123
Entry and consideration of 1.122
Erasures and insertions 1.121
Involving a departure from original invention 1.118
Manner of making 1.121
May be required 1.117
Not covered by original oath 1.67
Numbering of claims 1.126
Of amendments 1.124
Of claims 1.119
Of disclosure 1.118
Of drawing 1.123
Of specification 1.118
Paper and writing 1.52
Petition from refusal to admit 1.127
Proposed during interference 1.615
Reissue 121(e), 1.173, 1.174
Requisites of 1.33, 1.111, 1.115, 1.116
1.121, 1.123, 1.124, 1.125
Right to amend 1.111, 1.115, 1.116, 1.127
Signature to 1.33
Substitute specification 1.125
Time for 1.134
To accompany motion to amend interference 1.633
To applications in interference 1.633
To correct inaccuracies or prolixity 1.117
To correspond to original drawing or specification 1.118
To preliminary statement in interference 1.628
To reissues. 1.173, 1.174
To save from abandonment 1.135

Amino acid sequences (See also nucleotide and/or amino acid sequences)
Appeal to Board of Patent Appeals and Interferences:

Action following decision 1.197
Affidavits after appeal 1.195
Brief 1.192
Decision by Board 1.196
(Appeal to Board of Patent Appeals and Interferences):
Examiner's answer 1.193
Fees 1.17
Hearing of 1.194
New grounds for refusing a patent 1.196
Notice of appeal 1.191
Rehearing 1.197
Reopening after decision 1.198
Reply brief 1.193
Statement of grounds for rejecting, by Board of Appeals 1.196
Fee provided by rules of court 1301 From Board of Patent Appeals and Interferences 1.301
Notice and reasons of appeal 1.302
Time for 1.302, 1.304

Applicant for patent 1.41 - 1.48

Change 1.48
Deceased or insane inventor 1.42,1.43
Executor or administrator 1.42
Informed of serial number of application 1.54
Joint changed to sole 1.48
Letters for, sent to attorney or agent 1.33
May be represented by an attorney or agent 1.31
Personal attendance unnecessary 1.2
Required to conduct business with decorum and courtesy 1.3
Required to report assistance received 1.33
Sole changed to joint 1.48
Sole changed to another sole 1.48

Application for patent (See also Abandoned applications,Claims, Drawing, Examination of application, Reissues, Specification):

Accepted and filed for examination only when complete 1.53
Access to 1.14
Acknowledgment of filing 1.54
Alteration after execution 1.56
Alteration before execution 1.52
Arrangement 1.77
Continuation or division, reexecute not required 1.60, 1.62
Copies of, furnished to applicants 1.59
Cross-references of related applications 1.78
Deceased or insane inventor 1.42,1.43
Declaration 1.68
Duty of disclosure 1.56
Execution in blank 1.67
File wrapper continuing application 1.62
Filed by other than inventor 1.42, 1.43, 1.47
Filing date 1.53
Foreign language oath or declaration 1.69
Formulas and tables 158 General requisite 1.51
(Application for patent::)
Identification required in letters concerning 1.5
Incomplete papers not accepted and filed for examination 1.53
Interlineations, etc., to be indicated 1.52
Language, paper, writing, margin 1.52
Later filing of oath and filing fee 1.53
Must be made by actual inventor, with exceptions 1.41, 1.46
Names of all inventors required 1.41, 1.53
Non-English language 1.52
Owned by Government 103 Papers having filing date not to be returned 1.59
Parts filed separately 1.54
Parts of application desirably filed together 1.54
Parts of complete application 1.51
Processing fees 1.17
Relating to atomic energy 1.14
Retention fee 1.53(d)
Secrecy order 5.1-5.8
Secret while pending 1.14
Serial number and filing date 1.54
Tables and formulas 1.58
To contain but one invention unless connected 1.141
To whom made 1.51
Two or more by same party with conflicting claims 1.78

Application number 1.5(a)
Arbitration award filing 1.335
Arbitration in interference 1.690
Assignee:

Correspondence held with assignee of entire interest 3.71, 3.73
If of entire interest, patent may issue to him 1.46, 3.81
If of undivided part interest, correspondence will be held with inventor 1.33
If of undivided part interest, must assent to application for reissue of patent 1.171, 1.172
If of undivided part interest, patent may issue jointly 1.46, 3.81
May conduct prosecution of application 3.71, 3.73
May take action in interference 1.643

Assignments and recording:

Abstracts of title, fee for 1.19(b)
Conditional assignments 3.56
Cover sheet required 3.28, 3.31
Corrections 3.34
Date of receipt is date of record 3.54
Definitions 1.332
Effect of recording 3.54
Fees 1.21(h)
Formal requirements 3.21-3.28
If recorded before payment of issue fee, patent will issue to assignee 3.81
(Assignments and recording::)
Must be recorded in Patent and Trademark Office to issue patent to assignee 3.81
Must identify patent or application 3.21
Orders for copies of 1.12
Patent may issue to assignee 3.81
Recording data 3.51
Records open to public inspection 1.12
Requirements for recording 3.21, 3.41
What will be accepted for recording 3.11

Atomic energy applications reported to Department of Energy 1.14
Attorneys and agents:

Acting in representative capacity 1.33, 1.34
Advertising 10.32
Agents, registration of 10.6(b)
Assignment will not operate as a revocation of power 1.36
Associate 1.34
Attorneys at law, registration of 10.6(a)
Certificate of good standing 1.21(a)
Code of professional responsibility 10.20
Committee on Enrollment 10.3
Fee on admission 1.21(a)
Foreign patent attorneys and agents, registration of 10.6(c)
Former examiners, registration of 10.6(e)
General powers not recognized 1.34
Government officers and employees as 10.6(d)
Limited recognition 10.9
Must be refused recognition for misconduct 10.15
Oath and registration fee 10.8
Office cannot aid in selection of 1.31
Personal interviews with examiners 1.133
Persons not registered or recognized 10.10
Power of attorney or authorization of agent 1.34
Professional conduct 10.20
Registration of attorneys and agents 10.6
Removing names from registers 10.11
Representative capacity 1.33, 1.34
Representing conflicting parties 1.613
Required to conduct business with decorum and courtesy 1.3
Requirements for registration 10.7
Revocation of power 1.36
Signature and certificate of attorney 10.18
Suspension or disbarment proceedings 1.0.130-10.170
Who may act as 10.40
Withdrawal of 1.36

Authorization of agents. (See also Attorneys and agents.)
Award in arbitration 1.335


B

Balance in deposit account 1.25
Basic filing fee 1.16
Benefit of earlier application 1.78
Bill in equity (See also Civil action.)
Board of Appeals. (See also Appeal to Board of Patent Appeals and Interferences)
Box FWC 1.62(I)
Box PCT 1.1(b)
Box Reexam 1.1(c)
Briefs:

At final hearing in interference 1.656
In petitions to Commissioner 1.181
On appeal to Board 1.192

Business to be conducted with decorum and courtesy 1.3
Business to be transacted in writing 1.2


C

Certificate of correction 1.322, 1.323

Fees 1.20
Mistakes not corrected 1.325

Certificate of mailing (First Class) or transmission 1.8

Express mail 1.10

Certificate, Reexamination 1.570
Certified copies of records, papers, etc. 1.4(f), 1.13

Fee for certification 1.19(b)

Chemical and mathematical formulas and tables 1.58
Citation of prior art in patent 1.501
Citation of references 1.107
Civil action 1303, 1.304
Claims (See also Examination of applications):

Amendment of 1.119
Conflicting, same applicant or owner 1.78
Date of invention of 1.110
Dependent 1.75
Design patent 1.153
May be in dependent form 1.75
More than one permitted 1.75
Multiple dependent 1.75
Must conform to invention and specification 175 Notice of rejection of 1.104
Numbering of 1.126
Part of complete application 1.51
Plant patent. 1.166
Rejection of 1.106
Required 1.75
Twice or finally rejected before appeal 1.191

Color drawing 1.84(p)
Commissioner of Patents and Trademarks (See also Petition to Commissioner):

Address of 1.1
(Commissioner of Patents and Trademarks:)
All communications to Patent and Trademark Office to be addressed to 1.1
Cases decided by Board reopened only by 1.198
Conduct of disbarment proceedings 10.130
Initiates reexamination 1.520
May discipline attorneys and agents 10.130
Reconsideration of cases decided by former 1.184
Reissue in divisions referred to 1.177
Return of papers in violation of rule 1.3

Complaints against examiners, how presented 1.3
Composition of matter, specimens of ingredients may be required 1.93
Computer program listings 1.96
Concurrent office proceedings 1.565
Conduct of reexamination proceedings 1.550
Conflicting claims, same applicant or owner in two or more applications 1.78
Continuing application for invention disclosed and claimed in prior application 1.60, 1.62
Copies of patents, records, etc. 1.11, 1.12, 1.13
Copies of records, fees 1.19(b), 1.59
Copyright notice in specification 1.71(d)
Copyright notice on drawings 1.84(o)
Correction, certificate of 1.322, 1.323
Correction of inventorship 1.48, 1.324
Correspondence:

All letters and communications to the Office to be addressed to the Commissioner of Patents and Trademarks 1.1
Business with the Office to be transacted by 1.2
Discourteous communications returned 1.3
Double, with different parties in interest not allowed 1.33
Facsimile transmission 1.6(d)
Held with attorney or agent 1.33
Identification of application or patent in letter relating to 1.5
May be held exclusively with assignee of entire interest 3.81
Nature of 1.4
Patent owners in reexamination 1.33(c)
Receipt of letters and papers 1.6
Resumed with principal, if power or authorization is revoked 1.36
Rules for conducting in general 1.1-1.8
Separate letter for each subject of inquiry 1.4
Signature requirement 1.4(d)
When no attorney or agent 1.33
With attorney or agent after power or authorization is filed 1.33

Coupons sold by the Office 1.24
Court of Appeals for the Federal Circuit, appeal to (See also Appeal to Court of Appeals for the Federal Circuit).


D

Date of invention of subject matter of individual claims 1.110
Day for taking any action or paying any fee falling on Saturday, Sunday, or Federal holiday 1.7
Death or insanity of inventor 1.42, 1.43
Decision by the Board of Patent Appeals and Interferences 1.196

Action following decision 1.197

Declaration (See also Oath in patent application):

Foreign, language 1.69
In lieu of oath 1.68
In patent application 1.68

Definitions:

Independent inventor 1.9
National and international applications 1.9
Nonprofit organization 1.9
Service of process Part 15
Small business concern 1.9
Small entity 1.9
Terms under Patent Cooperation Treaty 1401 Testimony by employees Part 15a

Delivery of patent 1.315
Deposit accounts 1.25

Fees 1.21(b)

Deposit of biological material:

Acceptable depositary 1.803

Deposit of computer program listings 1.96
Depositions (See also Testimony in interferences):

Certificate of officer to accompany 1.676
Formalities to be observed in preparing 1.677
Person before whom taken 1.674
To be sealed up, addressed, and forwarded to the Commissioner 1.676
When taken must be filed 1.678

Description of invention. (See also Specification.)
Design Patent Applications:

Arrangement of specification 1.154
Claim 1.153
Drawing 1.152
Filing fee 1.16(f)
Issue and term 1.155
Issue fee 1.18(b)
Oath 1.153
Rules applicable 1.151
Title, description and claim 1.153

Determination of request for reexamination 1.515
Disbarment of attorneys and agents 10.23
Disclaimer, statutory:

During interference 1.662(a)
Fee 1.20(d)
Requirements of 1.321
Terminal 1.321

Disclosure, amendments to not permitted 1.118
Disclosure document fee 1.21(c)
Discovery in 1.672, 1.688
Division (See also Restriction of application.)
Division of patent on reissue 1.177
Document supply fees 1.19
Drawing:

Amendment of 1.118, 1.123
Arrangement of views 1.84(i)
Character of lines 1.84(i)
Color 1.84(a)(2)
Content of drawing 1.83
Copyright notice 1.84(s)
Correction 184(w), 1.85(c)
Cost of copies of 1.19
Design application 1.152
Figure for Official Gazette 1.84(j)
Filed with application 1.81
Graphics 1.84(d)
Hatching and shading 1.84(m)
Holes 1.84(x)
Identification 1.84(c)
If of an improvement, must show connection with old structure 1.83
Inferior or defective drawings will be rejected 1.85
Informal drawings 1.85
Ink 184(a)(1), 1.84(q)
Location of names 1.84(c)
Mask work notice 1.84(s)
Must be described in and referred to specification 174 Must show every feature of the invention 1.83
No return or release 1.85(b)
Numbering of sheets 1.84(t)
Numbering of views 1.84(u)
Original may be used with application for reissue 1.174
Original should be retained by applicant 1.81(a)
Paper 1.84(a)
Photographs 1.84(b)
Plant patent application 1.81, 1.165
Printed and published by Office when patented 184 Reference characters 1.74, 1.84(f)
Reissue 1.174
Release not permitted 1.85(b)
Required by law when necessary for understanding 1.81
Scale 1.84(k)
Security markings 1.84(v)
Shading 1.84(m)
Size of sheet and margins 1.84(f),(g)
(Drawing::)
Specific rules relating to preparation of drawings will be enforced 1.85
Standards for drawings 1.84
Symbols, legends 1.84(g)
Views 1.84(h)
When necessary, part of complete application 1.51

Duty of disclosure 1.56, 1.555
Patent term extension 1.765


E

Election of species 1.146
Employee testimony (See also Testimony by Office employees)
Establishing small entity status 1.27, 1.28
Evidence. (See also Testimony in interferences.)
Examination of applications:

Abandoned and forfeited applications not cited in 1.108
Advancement of examination 1.102
As to form 1.104, 1.105
Citation of references 1.107
Completeness of examiner's action 1.105
Examiner's action 1.104
International-type search 1.104
Nature of examination 1.104
Order of examination 1.101
Reasons for allowance 1.109
Reexamination after rejection if requested 1.111
Reexamination of original claims upon reissue 1.176
Reissue 1.176
Rejection of claims 1.106
Suspension of 1.103

Examination of papers by attorney or agent not permitted without authorization 1.34
Examiners:

Answers on appeal 1.193
Complaints against 1.3
Interviews with 1.133

Executors 1.42, 1.44
Exhibits. (See also Models and exhibits.)
Export of technical data 5.19, 5.20
Express abandonment 1.138
"Express Mail" certificate of mailing 1.6, 1.10
Extension of patent term:

Applicant for 1.730
Application for 1.740
Calculation of term:

Animal drug product 1.778
Food or color additive 1.776
Human drug product 1.775
Veterinary biological product 1.779

Medical device 1777 Certificate 1.780
(Extension of patent term:)
Conditions for 1.720
Determination of eligibility 1.750
Duty of disclosure 1.765
Filing date of application 1.741
Interim extension under 35 U.S.C. 156(d)(5) . . . . . . . . . .1.790
Interim extension umder 35 U.S.C. 156(e)(2) 1.760 Multiple applications 1.785
Patents subject to 1.710
Termination of interim extension granted under 35 U.S.C. 156(d)(5) . . . . . . . . . . . . . . . . . . . . . . . . 1.791
Withdrawal of application 1.770

Extension of time 1.136

Fees 1.17
Interference proceedings 1.645
Reexamination proceedings 1.550(c)

 

F

Facsimile transmission 1.6(d), 1.8
Federal Register, publication of rules in 1351, 1.352
Fees and payment of money:

Deposit accounts 1.25
Extension of time 1.17
Fee on appeal to the Court of Appeals for the Federal Circuit provided by rules of court 1.301
Fees in case of petitions 1.181
Fees payable in advance 1.22
Foreign filing license petition 1.17(h)
For international-type search report 1.21(e)
Method of payment 1.23
Money by mail at risk of sender 1.23
Money paid by mistake 1.26
Petitions 1.17
Reexamination request 120(c)
Refunds 1.26
Relating to international applications 1.445
Schedule of fees and charges 1.16-1.21

File wrapper continuing application procedure 1.62
Files and papers of abandoned applications, disposition 1.34
Files open to the public 1.11
Filing date of application 1.53
Filing fee part of complete application 1.51
Filing fees 1.16
Filing in Post Office 1.10
Filing of interference settlement agreements 1.666
Final rejection:

Appeal from 1.191
Response to 1.113, 1.116
When and how given 1.113

Foreign application 1.55

License to file 5.11-5.33

Foreign country:

Taking oath in 1.66
Taking testimony in 1.684

Foreign mask work protection Part 150 Evaluation of request 150.4

Definition 150.1
Duration of proclamation 150.5
Initiation of evaluation 150.2
Mailing address 150.6
Submission of requests 150.3

Foreign patent rights acquired by government 101.1-101.11

Licensing 102.1-102.6

Forfeited application, for nonpayment of issue fee 1.155, 1.316

Not cited as reference 1.108

Formulas and tables in patent applications. 1.58
Fraud practiced or attempted on Office 1.56


G

Gazette (See also Official Gazette.)
General authorization to charge deposit account 1.25
General information and correspondence 1.1-1.8
Government employees, as attorney or agent 10.6
Government interest in patent, recording of 7.1-7.7
Guardian of insane person may apply for patent 1.43


H

Hearings:

Before the Board of Patents Appeals and Interferences 1.194
Fee for appeal hearing 1.17
In disbarment proceedings 10.144
Of motions in interferences 1.640

Holiday, time for action expiring on 1.6, 1.7


I

Identification of application, patent or registration 1.5
Independent inventor:

Definition 1.9
Status statement 1.27

Information disclosure statement:

At time of filing application 1.51
Content of 98 Reexamination 1.555
To comply with duty of disclosure, 197 Information, Public 1.15

Insane inventor, application by guardian of 1.43
Interferences (See also Depositions, Motions in interferences, Preliminary statement in interferences):

Abandonment of the contest 1.662
Access to applications 1.612
Access to preliminary statement 1.631
(Interferences:)
Action by examiner after interference 1.664
Action if statutory bar appears 1.659
Addition of new party by examiner-in-chief. 1.642
Amendment during 1.615, 1.633, 1.634
Appeal to the Court of Appeals for the Federal Circuit. 1.301, 1.302
Applicant requests 1.604
Arbitration 1.690
Briefs at final hearing 1.656
Burden of proof 1.657
Civil action 1.303
Claims copied from patent 1.606, 1.607
Claims of defeated parties stand finally disposed of 1.633
Concession of priority 1.662
Conflicting parties having same attorney 1.613
Copying claims from patent 1.606, 1.607
Correspondence 1.5(e)
Declaration of interference 1.611
Definition 1.601
Disclaimer to avoid interference 1.662(a)
Discovery 1.671, 1.688
Dissolution of 1.633
Dissolution on motion of examiner 1.641
Extension of time 1.645
Failure of junior party to take testimony 1652 Failure to prepare for 1.603-1.606
Final decision 1.658
Final hearing 1.654
Final hearing briefs 1.656
Identifying claim from patent 1.607(a)(3), 1.637(e)(1)(vi)
In what cases declared 1.601
Inspection of cases of opposing parties 1.612
Interference with a patent 1.606-1.608
Junior party fails to overcome filing date of senior party 1.640
Jurisdiction of interference 1.614
Manner of service of papers 1.646
Matters considered in determining priority 1.655
Motions 1.633-1.638
Non-patentability argued at final hearing 1.655
Notice and access to applications of opposing parties 1.612
Notice of intent to argue abandonment 1.632
Notice of reexamination, reissue, protest, or litigation 1.660
Notice to file civil action 1.303
Notices and statements 1.611
Order to show cause, judgment on the record 1.640
Ownership of applications or patents involved 1.602
Petitions 1.644
(Interferences:)
Preliminary statement contents 1.622-1.625
Preparation for 1.603-1.605
Presumption as to order of invention 1.657
Prosecution by assignee 1.643
Recommendation by Board of Patent Appeals and Interferences 1.659
Records of, when open to public 1.11
Reissue filed by patentee during 1.662
Requests by applicants 1.604
Requests for findings of fact and conclusions of law 1.656
Return of unauthorized papers 1.618
Review of decision by civil action 1.303
Same party 1.602
Sanctions for failure to comply with rules of order 1.616
Second interference between same parties 1.665
Secrecy order cases 5.3(b)
Service of papers 1.646
Statement of, from examiner to Board 1.609
Status of claims of defeated applicant after interference 1.663
Statutory disclaimer by patentee during 1.662
Suggestion of claims for interference 1.605
Summary judgment 1.617
Suspension of ex parte prosecution 1.615
Termination of interference 1.661
Testimony copies 1.653
Time period for completion 1.610
Times for discovery and taking testimony 1.651
Translation of document in foreign language 1.647

International application. (See also Patent Cooperation Treaty.)
International Preliminary Examining Authority 1.416
Interview summary 1133 Interviews with examiner 1.133, 1.560
Inventor (See also Applicant for patent; Oath in patent application):

Death or insanity of 142, 1.43
Refuses to sign application 1.47
To make application 1.41
Unavailable 1.47

Inventor's certificate priority benefit 1.55
Inventorship and date of invention of the subject matter of individual claims 1.110
Issue fee 1.18
Issue of patent (See also Allowance and issue of patent.)


J

Joinder of inventions in one application 1.141
Joint inventors 1.45, 1.47, 1.324
Joint patent to inventor and assignee 1.46, 3.81
Jurisdiction:

After decision by Board of Patent Appeals and Interferences 1.197, 1.198
After notice of allowance 1.312
Of contested case 1.614

 


L

Lapsed patents 1.317
Legal representative of deceased or incapacitated inventor 1.42-1.43
Letters to the Office. (See also Correspondence.)
Library service fee 1.19(c)
License and assignment of government interest in patent 7.1-7.3
License for foreign filing 5.11-5.17
List of U.S. patents classified in a subclass, cost of 1.19(d)
Local delivery box rental 1.21(d)


M

Maintenance fees 1.20

Acceptance of delayed payment of 1.378
Fee address for 1.363
Review of decision refusing to accept 1.377
Submission of 1.366
Time for payment of 1.362

Mask work notice in specification 1.71(d)
Mask work notice on drawing 1.84(o)
Mask work protection, Foreign Part 150
Microfiche deposit 1.96
Microorganisms (See also Deposit of Biological Material)
Minimum balance in deposit accounts 1.25
Misjoinder of inventor 1.48, 1.324
Mistake in patent, certificate there of issued 1.322, 1.323
Models and exhibits:

Copies of 1.95
If not claimed within reasonable time, may be disposed of by Commissioner 1.94
If on examination model be found necessary request therefor will be made 1.91
In contested cases 1.676
May be required 1.92
Model not generally required in application or patent 1.91
Not to be taken from the Office except in custody of sworn employee 1.95
Return of 1.94
Working model may be required 1.92

Money (See also Fees and payment of money.)
Motions in interference 1.633-1.637

To take testimony in foreign country 1.684

 


N

Name of applicant. 1.41
New matter inadmissible in application 1.118
New matter inadmissible in reexamination 1.530(d), 1.552(b)
New matter inadmissible in reissue 1.173
Non-English language specification fee 1.17(k)
Non-profit organization:

Definition 1.9
Status statement 1.27

Notice:

Of allowance of application 1.311
Of appeal to the Court of Appeals for the Federal Circuit 1.301, 1.302
Of arbitration award 1.335
Of defective reexamination request 1.510(c)
Of interference 1.611
Of oral hearings before the Board of Patent Appeals and Interferences 1.194
Of rejection of an application 1.104
Of taking testimony 1.673
Of use of official records as evidence 1.682
To conflicting parties with same attorney or agent 1.613
To parties in interference cases 1.611

Nucleotide and/or amino acid sequences:

Amendments to 1.825
Disclosure in patent applications 1.821
Format for sequence data 1.822
Replacement of 1.825
Requirements 1.823
Symbols 1.822

 


O

Oath in patent application: (See also Declaration)

Apostilles 1.66
Before whom taken in foreign countries 1.66
Before whom taken in United States 1.66
By administrator or executor 1.42, 1.63
By guardian of insane person 1.43, 1.63
Certificate of Officer administering 1.66
Continuation-in-part 1.63(d)
Declaration 1.68
Foreign language 1.69
International application 1.497
Inventor's Certificate 1.63
Made by inventor 1.41, 1.63
New oath required if original too old 1.63
Officers authorized to administer oaths 1.66
Part of complete application 1.51
Person making 1.64
Plant patent application 1.162
Requirements of 1.63
(Oath in patent application:)
Ribboned to other papers 1.66
Sealed 1.66
Signature to 1.63
Supplemental oath for matter disclosed but not originally claimed 1.67
To acknowledge duty of disclosure 1.63
When taken abroad to seal all papers 1.66

Oath in reissue application 1.175
Oath or declaration Plant patent application 1.162

When international application enters national stage 1.497

Object of the invention 1.73
Office action time for response 1.134
Office fees. (See also Fees and payment of money.)
Officers and employees, Government, acting as attorneys or agents 10.6
Official action, based exclusively upon the written record 1.2
Official business, should be transacted in writing 1.2
Official Gazette:

Amendments to rules published in 1.351
One view of drawing published in 1.84
Service of notices in 1.646

Oral statements 1.2
Order of examination 1.101
Order to reexamine 1.525


P

Papers badly written, printing or typewriting required 1.52
Papers not received on Saturday, Sunday, or holidays 1.6
Patent application (See also Application for patent.)
Patent attorneys and agents. (See also Attorneys and agents.)
Patent Cooperation Treaty:

Amendments and corrections during international processing 1.471
Amendments during international preliminary examination 1.485
Applicant for international application 1.421
Changes in person, name or address, where filed 1.421(f), 1.472
Conduct of international preliminary examination 1.484
Definition of terms 1.401
Delays in meeting time limits 1.468
Demand for international preliminary examination 1480 Designation of States 1.432
Entry into national stage 1.491

As a designated office 1.494
As an elected office 1.495

(Patent Cooperation Treaty:)
Examination at national stage 1.496
Fees:

Designation fees 1.432
Due on filing of international application. 1.431(c)
Failure to pay results in withdrawal of application 1.431(c), 1.432
Filing and processing fees 1.445
International preliminary examining 1.482
National stage 1.492
Refunds 1.446

Filing by other than inventor 1.425
International application requirements 1.431

Abstract 1.438
Claims 1.436
Description 1.435
Drawings 1.437
Physical requirements .1.433
Request. 1.434

International Bureau 1.415
International Preliminary Examining Authority 1.416
Inventor deceased 1.422
Inventor insane or legally incapacitated 1.423
Inventors, joint 1.424
National stage examination 1.496
Oath or declaration at national stage 1.497
Priority, claim for 1.451
Record copy to International Bureau, transmittal procedures 1.461
Representation by attorney or agent 1.455
Rule 13 1.475
Time limits for processing applications 1.465, 1.468
United States as:

Designated Office 1.414, 1.497
International Searching Authority 1.413
Receiving Office 1.412

Unity of invention:

Before International Searching Authority 1.475, 1.476
Before International Preliminary Examining Authority 1.487, 1.488
National stage 1.475, 1499 Protest to lack of 1.477, 1.489

Patent policy, government 100.1-100.11
Patentee notified of interference 1.602
Patents (See also Allowance and issue of Patent):

Available for license or sale, publication of notice 1.21(i)
Certified copies of 1.13 Copying claims of 1.606, 1.607
Correction of errors in 1.171, 1.322, 1.323, 1.324
Date, duration and form 1.317
Delivery of 1.315
Disclaimer 1.321
Identification required in letters concerning 1.5
(Patents:)
Lapsed, for nonpayment of issue fee 1.317
Obtainable by civil action 1.303
Price of copies 1.19
Records of, open to public 1.11
Reissuing of, when defective 1.171-1.179

Payment of fees 1.23
Personal attendance unnecessary 1.2
Petition for reissue 1.171, 1.172
Petition to Commissioner:

Fees 1.17
For delayed payment of issue fee 1.155, 1.316, 1.317
For license for foreign filing 5.12
For the revival of an abandoned application 1.137
From formal objections or requirements 1.113, 1.181
From requirement for restriction 1.144
General requirements 1.181
In interferences 1.644
In reexamination 1.515(c)
On refusal of examiner to admit amendment 1.127
Questions not specifically provided for 1.182
Reconsideration of cases decided by former Commissioners 1.184
Suspension of rules 1.183
To exercise supervisory authority 1.181
To make special 1.102
Upon objection that appeal is informal. 1.193

Photographs 1.84(b)
Plant patent applications:

Applicant 1.162
Claim 1.164
Declaration 1.162
Description 1.162
Drawings 1.165
Examination 1.167
Fee for copies 1.19
Filing fee 1.16(g)
Issue fee 1.18(c)
Oath 1.162
Rules applicable 1.161
Specification 1.163
Specimens 1.166

Post issuance fees 1.20
Post Office receipt as filing date 1.10
Postal emergency or interruption 1.6(d)
Power of attorney. (See also Attorneys or agents.)
Preliminary Examining Authority, International 1.416
Preliminary statement in interferences:

Access to 1.631
Contents to 1.622-1.627
Contents of, invention made abroad 1.624
Correction of statement on motion 1.628
Effect of statement 1.629
(Preliminary statement in interferences:)
Failure to file 1.639, 1.640
In case of motion to amend interference 1633 May be amended if defective 1.628
Reliance on prior application 1.630
Requirement for 1.621
Sealed before filing. 1.627
Service on opposing parties 1.621
Subsequent testimony alleging prior dates excluded 1.629
When opened to inspection 1.631

Printing testimony 1.653
Prior art citation in patent 1.501
Prior art may be made of record in patent file 1.501
Prior art statement:

Content of 1.98
In reexamination 1.555
To comply with duty of disclosure. 1.97

Priority of invention (See also Interferences.)
Priority, right of, under treaty or law 1.55
Processing and retention fee 1.21(b), 1.53(d)
Proclamation as to protection of foreign mask works Part 150
Production of documents in legal proceedings Part 15a
Protests to grants of patent 1.291
Public Information 1.15
Public use proceedings 1.292

Fee 1.17(j)

Publication:

Of patent based on international application. 1.318
Of reexamination certificate 1.570(f)

 


R

Reasons for allowance 1.109
Reconsideration of cases decided by a former Commissioner 1.184
Reconsideration of Office action 1.112
Recording of assignments. (See also Assignments and recording.)
Records of the Patent and Trademark Office 1.11-1.15
Records used as evidence in interference 1.682
Reexamination:

Amendments, manner of making 1.121(f)
Announcement in O.G 1.11(c)
Appeal to Board 1.191
Appeal to C.A.F.C. 1.301
Certificate 1.570
Civil action 1.303
Concurrent office proceedings 1.565
Conduct of proceedings. 1.550
Correspondence address 1.33(c)
Decision of request 1.515
Duty of disclosure 1.555
(Reexamination:)
Examiner's action. 1.104
Fee 1.20(c)
Fee charged to deposit account 1.25
Fee refund 1.26
Identification in letter 1.5(d)
Initiated by Commissioner 1.520
Interference 1.565
Interviews 1.560
Open to public 1.11(c)
Order 1.525
Reconsideration 1.112
Refund of fee 1.26
Reply by requester 1.535
Reply to action 1.111
Request 1.510
Response consideration 1.540
Scope 1.552
Service 1.248
Statement of patent owner 1.530

Reference characters in drawings 1.74, 1.84(f)
References cited on examination 1.104, 1.106, 1.107
Refund of money paid by mistake 1.26
Register of Government interest in patents 7.1-7.7
Rehearing:

On appeal to Board 1.197
Petition for, when time for appeal stayed 1.302

Reissues:

Applicants, assignees 1.172
Application for reissue 1.171
Application made and sworn to by inventor, if living 1.172
Declaration 1.175
Drawings 1.174
Examination of reissue 1.176
Filed during interference 1.662(b)
Filed during reexamination 1.565
Filing fee 1.16
Filing of announcement in Official Gazette 1.11
Grounds for and requirements 1.171-1.179
Issue fee 1.18(a)
Loss of original patent 1.178
Notice of reissue application 1.179
Oath 1.175
Open to public 1.11
Original claims subject to reexamination 1.176
Original patent surrendered 1.178
Reissue in divisions 1.177
Specification 1.173
Take precedence in order of examination 1.176
To contain no new matter 1.173
What must accompany application 1.171, 1.172
When in interference 1.660

Rejection:

After two rejections appeal may be taken from examiner to Board 1.191
Applicant will be notified of rejection with reasons and references 1.104
Examiner may rely on admissions by applicant or patent owner, or facts within examiner's knowledge 1.106
Final 1.113
Formal objections 1.104, 1.105
On account of invention shown by others but not claimed, how overcome 1.131
References will be cited. 1.106
Requisites of notice of 104, 1.106, 1.107

Reply brief 1.193
Reply by applicant or patent owner 1.111
Reply by requester 1.535
Representative capacity 1.34(a)
Request for reconsideration 1.112
Request for reexamination 1.510
Reservation clauses not permitted 1.79
Response time to Office action. 1.134
Restriction of application. 1.141-1.146

Claims to nonelected invention withdrawn 1.142
Constructive election 1.145
Petition from requirements for 1.144
Provisional election 1.143
Reconsideration of requirement 1.143
Requirement for 1.142
Subsequent presentation of claims for different invention 1.145

Retention fee 1.21(l), 1.53(d)
Return of correspondence 1.5(a)
Return of papers having a filing date 1.59
Revival of abandoned application 1.137

Unavoidable abandonment fee 1.17(l)
Unintentional abandonment fee 1.17(m)

Revocation of power of attorney or authorization of agent 1.36
Rules of Practice:

Amendments to rules will be published 1.351
Publication of notice of proposed amendments 1.352

 


S

Saturday, when last day falls on 1.7
Scope of reexamination proceedings 1.552
Secrecy order 5.1-5.8
Sequences:

Amendments to sequence listing and computer readable copy 1.825
Disclosure requirements 1.821, 1.823

Sequence data, symbols and format 1.822
Submissions in computer readable form 1.824
Serial number of application 1.53
Service of notices:

For taking testimony 1.673
In interference cases 1.611
Of appeal to the U.S. Court of Appeals for the Federal Circuit 1.303

Service of papers 1.248
Service of process Part 15

Acceptance of service of process 15.3
Definition 15.2
Scope and purpose 15.1
Shortened period for response 1.134

Signature:

Of attorney or agent 10.18
To amendments, etc., when no attorney 1.33
To express abandonment 1.138
To oath 1.63
To reissue oath or declaration 1.172

Small business concern:

Definition 1.9

Status statement 1.27
Small entity:

Definition 1.9
License to Federal agency 1.27

Statement 1.27
Statement in parent application 1.28
Status establishment 1.27, 1.28
Status update 1.28
Solicitor's address 1.1(g)
Species of invention claimed 1.141, 1.146
Specification (See also Application for patent, Claims):

Abstract 1.72
Amendments to 1.117, 1.118, 1.125
Arrangement of 1.77
Best mode 1.71
Claim 1.75
Contents of 1.71-1.75
Copyright notice 1.71(d)
Cross-references to other applications 1.78
Description of the invention 1.71
Erasures and insertions must not be made by applicant 1.121
If defective, reissue to correct 1.171-1.179
Mask work notice 1.71(d)
Must conclude with specific and distinct claim 1.75
Must point out new improvements specifically 1.71
Must refer by figures to drawings 1.74
Must set forth the precise invention 1.71
Not returned after completion 1.59
Object of the invention 1.73
Order of arrangement in framing 1.77
Paper, writing, margins 1.52
(Specification:)
Part of complete application 1.51
Reference to drawings 1.74
Requirements of 1.71-1.75
Reservation clauses not permitted 1.79
Substitute 1.125
Summary of the invention 1.73
Title of the invention 1.72
To be rewritten, if necessary 1.125

Specimens (See also Models and exhibits.)
Specimens of composition of matter to be furnished when required 1.93
Specimens of plants 1.166
Statement of status as small entity 1.27
Statutory disclaimer fee 1.20(d)
Statutory invention registrations 1.293

Examination. 1.294
Publication of 1.297
Review of decision finally refusing to publish 1.295
Withdrawal of request for publication of 1.296

Sufficient funds in deposit account 1.25
Suit in equity (See also Civil action.)
Summary of invention 1.73
Sunday, when last day falls on 1.7
Supervisory authority, petition to Commissioner to exercise 1.181
Supplemental oath for amendment presenting claims for matter disclosed but not originally claimed 1.67
Surcharge for oath or basic filing fee filed after filing date 1.16(e), 1.53(d)
Suspension of action 1.103
Suspension of ex parte prosecution during interference 1.615
Suspension of rules 1.183
Symbols for drawings 1.84(n)


T

Tables in patent applications 1.58
Term of design patent 1.155
Terminal disclaimer 1.321
Testimony by Office employees Part 15a

Definition 15a.2
General rule 15a.4
Office policy 15a.3
Private litigation 15a.6
Proceedings involving the United States 15a.7
Production of documents 15a.4
Scope 15a.1
Subpeona of Office employee 15a.7

Testimony in interferences:

Additional time for taking 1.645
Assignment of times for taking 1.651
Certification and filing by officer 1.676
(Testimony in interferences:)
Copies of 1.653
Depositions must be filed 1.678
Discovery 1.687
Effect of errors and irregularities in deposition 1.685
Evidence must comply with rules 1.671
Examination of witnesses 1.675
Failure to take 1.652
Form of deposition 1.677
Formal objections to 1.685
Formalities in preparing depositions 1.674-1.677
In foreign countries 1.684
Inspection of testimony 1.679
Manner of taking testimony of witnesses 1.672
Motion to extend time for taking 1.645
Not considered if not taken and filed in compliance with rules 1.671
Notice of examination of witnesses 1.673
Notice of intent to use records 1.682
Objections noted in depositions 1.675
Objections to formal matters 1.685
Official records and printed publications 1.682
Officer's certificate 1.676
Persons before whom depositions may be taken 1.674
Printing of 1.653
Service of notice 1.673
Stipulations or agreements concerning 1.672
Taken by depositions 1.672
Testimony taken in another interference or action, use of 1.683
Time for taking 1651 To be inspected by parties to the case only 1.679

Time expiring on Saturday, Sunday, or holiday 1.7
Time for payment of issue fee 1.311
Time for response by applicant 1.135, 1.136
Time for response by patent owner 1.530
Time for response by requester 1.535
Time for response to Office action 1.134. 1.136
Time, periods of 1.7
Timely filing of correspondence 1.8, 1.10
Title of invention 1.72
Title reports, fee for 1.19(b)(4)


U

Unavoidable abandonment 1.137
Unintentional abandonment 1.137
United States as Designated Office 1.414, 1.497

Elected Office 1.414
International Preliminary Examining Authority 1.416
International Searching Authority 1.413
Receiving Office 1.412

Unsigned continuation or divisional application 1.60, 1.62
Use of file of parent application 1.62


V

Verified statement of small entity status 1.27


W

Waiver of secrecy 1.62
Withdrawal from issue 1.313
Withdrawal of attorney or agent 1.36
Withdrawal of request for statutory invention registration 1.296

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BitLaw is provided as a free service by Daniel A. Tysver, a registered patent attorney practicing in Hopkins, Minnesota. © 1996 Daniel A. Tysver. All Rights Reserved. The legal analysis of any situation depends on a variety of factors which cannot be properly represented or accounted for on a web page. The information on this page is therefore intended as general information only, and is not intended to serve as legal advice or as a substitute for legal counsel. Please send any comments or suggestions to Daniel A. Tysver: e-mail: dtysver@bitlaw.com; phone: (612) 933-3043; fax: (612) 933-3049; or write: 1011 First Street South, Suite 440, Hopkins, MN 55343.