37 CFR Part 1 Index
Patent Regulations
Executive summary:
This document contains the index for Part 1 of Chapter 37 of the Code of Federal Regulations. These regulations pertain to the patent application process. This version of the Patent Regulations was updated in November 2005.
PATENT REGULATIONS
Code of Federal Regulations
Chapter 37, Part 1- Patents
You may wish to go directly to one of the following sections in this index.
Part 1 - Rules Of Practice In Patent Cases
Subpart A - General ProvisionsGeneral Information And Correspondence
Records And Files Of The Patent And Trademark Office
Fees And Payment Of MoneySubpart B - National Processing Provision
Prosecution Of Application And Appointment Of Attorney Or Agent
Who May Apply For A Patent
The Application
Oath Or Declaration
Specification
The Drawings
Models, Exhibits, Specimens
Information Disclosure Statement
Examination Of Applications
Action By Applicant And Further Consideration
Amendments
Transitional Provisions
Affidavits Overcoming Rejections
Interviews
Time For Reply By Applicant; Abandonment Of Application
Joinder Of Inventions In One Application; Restriction
Design Patents
Plant Patents
Reissues
Petitions And Action By The Director
Appeal To The Board Of Patent Appeals And Interferences
Publication Of Applications
Miscellaneous Provisions
Protests And Public Use Proceedings
Review Of Patent And Trademark Office Decisions By Court
Allowance And Issue Of Patent
Disclaimer
Correction Of Errors In Patent
Arbitration Awards
Amendment Of Rules
Maintenance FeesSubpart C - International Processing Provisions
General Information
Who May File An International Application
The International Application
Fees
Priority
Representation
Transmittal Of Record Copy
Timing
Amendments
Unity Of Invention
International Preliminary Examination
National StageSubpart D - Ex Parte Reexamination Of Patents
Citation Of Prior Art
Request For ReexaminationSubpart F - Adjustment And Extension Of Patent Term
Adjustment Of Patent Term Due To Examination Delay
Extension Of Patent Term Due To Regulatory ReviewSubpart G - Biotechnology Invention Disclosures
Deposit Of Biological Material
Application Disclosures Containing Nucleotide And/Or Amino Acid SequencesPrior Art Citations
Requirements For Inter Partes Reexamination Proceedings
Official Gazette.
Inter Partes Reexamination Of Patents
Information Disclosure In Inter Partes Reexamination
Office Actions And Responses (Before The Examiner) In Inter Partes Reexamination
Interviews Prohibited In Inter Partes Reexamination
Extensions Of Time, Termination Of Proceedings, And Petitions To Revive In Inter Partes Reexamination
Appeal To The Board Of Patent Appeals And Interferences In inter Partes Reexamination
Appeal To The United States Court Of Appeals For The Federal Circuit In Inter Partes Reexamination
Concurrent Proceedings Involving Same Patent In Inter Partes Reexamination
Reexamination Certificate In Inter Partes Reexamination
SUBCHAPTER A - GENERAL
PART 1 - RULES OF PRACTICE IN PATENT CASES
Subpart A - General Provisions
GENERAL INFORMATION AND CORRESPONDENCE
Section 1.1 Addresses for non-trademark correspondence with the United States Patent and Trademark Office.
Section 1.2 Business to be transacted in writing.
Section 1.3 Business to be conducted with decorum and courtesy.
Section 1.4 Nature of correspondence and signature requirements.
Section 1.5 Identification of patent, patent application, or patent-related proceeding.
Section 1.6 Receipt of correspondence.
Section 1.7 Times for taking action; Expiration on Saturday, Sunday, or Federal holiday.
Section 1.8 Certificate of mailing or transmission.
Section 1.9 Definitions.
Section 1.10 Filing of papers and fees by "Express Mail."
Section 1.11 Files open to the public.
Section 1.12 Assignment records open to public inspection.
Section 1.13 Copies and certified copies.
Section 1.14 Patent applications preserved in confidence.
Section 1.15 [Reserved]
Section 1.16 National application filing, search, and examination fees.
Section 1.17 Patent application and reexamination processing fees.
Section 1.18 Patent post allowance (including issue) fees.
Section 1.19 Document supply fees.
Section 1.20 Post issuance fees.
Section 1.21 Miscellaneous fees and charges.
Section 1.22 Fees payable in advance.
Section 1.23 Method of payment.
Section 1.24 [Reserved]
Section 1.25 Deposit accounts.
Section 1.26 Refunds.
Section 1.27 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.
Section 1.28 Refunds when small entity status is later established; how errors in small entity status are excused.
Subpart B - National Processing Provision
PROSECUTION OF APPLICATION AND APPOINTMENT OF ATTORNEY OR AGENT
Section 1.31 Applicant may be represented by one or more patent practitioners or joint inventors.
Section 1.32 Power of attorney.
Section 1.33 Correspondence respecting patent applications, reexamination proceedings, and other proceedings.
Section 1.34 Acting in a representative capacity.
Section 1.36 Revocation of power of attorney; withdrawal of patent attorney or agent.
Section 1.41 Applicant for patent.
Section 1.42 When the inventor is dead.
Section 1.43 When the inventor is insane or legally incapacitated.
Section 1.44 [Reserved]
Section 1.45 Joint inventors.
Section 1.46 Assigned inventions and patents.
Section 1.47 Filing when an inventor refuses to sign or cannot be reached.
Section 1.48 Correction of inventorship in a patent application, other than a reissue application, pursuant to 35 U.S.C. 116.
Section 1.51 General requisites of an application.
Section 1.52 Language, paper, writing, margins, compact disc specifications.
Section 1.53 Application number, filing date, and completion of application.
Section 1.54 Parts of application to be filed together; filing receipt.
Section 1.55 Claim for foreign priority.
Section 1.56 Duty to disclose information material to patentability.
Section 1.57 Incorporation by reference.
Section 1.58 Chemical and mathematical formulae and tables.
Section 1.59 Expungement of information or copy of papers in application file.
Section 1.60 [Reserved]
Section 1.61 [Reserved]
Section 1.62 [Reserved]
Section 1.63 Oath or declaration.
Section 1.64 Person making oath or declaration.
Section 1.66 Officers authorized to administer oaths.
Section 1.67 Supplemental oath or declaration.
Section 1.68 Declaration in lieu of oath.
Section 1.69 Foreign language oaths and declarations.
Section 1.70 [Reserved]
Section 1.71 Detailed description and specification of the invention.
Section 1.72 Title and abstract.
Section 1.73 Summary of the invention.
Section 1.74 Reference to drawings.
Section 1.75 Claim(s).
Section 1.76 Application data sheet.
Section 1.77 Arrangement of application elements.
Section 1.78 Claiming benefit of earlier filing date and cross-references to other applications.
Section 1.79 Reservation clauses not permitted.
Section 1.81 Drawings required in patent application.
Section 1.83 Content of drawing.
Section 1.84 Standards for drawings.
Section 1.85 Corrections to drawings.
Section 1.88 [Reserved]
Section 1.91 Models or exhibits not generally admitted as part of application or patent.
Section 1.92 [Reserved]
Section 1.93 Specimens.
Section 1.94 Return of models, exhibits or specimens.
Section 1.95 Copies of exhibits.
Section 1.96 Submission of computer program listings.
Section 1.97 Filing of information disclosure statement.
Section 1.98 Content of information disclosure statement.
Section 1.99 Third-party submission in published application.
Section 1.101 [Reserved]
Section 1.102 Advancement of examination.
Section 1.103 Suspension of action by the Office.
Section 1.104 Nature of examination.
Section 1.105 Requirements for information.
Section 1.106 [Reserved]
Section 1.107 [Reserved]
Section 1.108 [Reserved]
Section 1.109 Double Patenting
Section 1.110 Inventorship and date of invention of the subject matter of individual claims.
Section 1.111 Reply by applicant or patent owner to a non-final Office action.
Section 1.112 Reconsideration before final action.
Section 1.113 Final rejection or action.
Section 1.114 Request for continued examination.
Section 1.115 Preliminary amendments.
Section 1.116 Amendments and affidavits or other evidence after final action and prior to appeal.
Section 1.117 [Reserved]
Section 1.118 [Reserved]
Section 1.119 [Reserved]
Section 1.121 Manner of making amendments in applications.
Section 1.122 [Reserved]
Section 1.123 [Reserved]
Section 1.124 [Reserved]
Section 1.125 Substitute specification.
Section 1.126 Numbering of claims.
Section 1.127 Petition from refusal to admit amendment.
Section 1.129 Transitional procedures for limited examination after final rejection and restriction practice.
Section 1.130 Affidavit or declaration to disqualify commonly owned patent or published application as prior art.
Section 1.131 Affidavit or declaration of prior invention.
Section 1.132 Affidavits or declarations traversing rejections or objections.
Section 1.133 Interviews.
Section 1.134 Time period for reply to an Office action.
Section 1.135 Abandonment for failure to reply within time period.
Section 1.136 Extensions of time.
Section 1.137 Revival of abandoned application, terminated or limited reexamination prosecution, or lapsed patent.
Section 1.138 Express abandonment.
Section 1.139 [Reserved]
Section 1.141 Different inventions in one national application.
Section 1.142 Requirement for restriction.
Section 1.143 Reconsideration of requirement.
Section 1.144 Petition from requirement for restriction.
Section 1.145 Subsequent presentation of claims for different invention.
Section 1.146 Election of species.
Section 1.151 Rules applicable.
Section 1.152 Design drawings.
Section 1.153 Title, description and claim, oath or declaration.
Section 1.154 Arrangement of application elements in a design application.
Section 1.155 Expedited examination of design applications.
Section 1.161 Rules applicable.
Section 1.162 Applicant, oath or declaration.
Section 1.163 Specification and arrangement of application elements in a plant application.
Section 1.164 Claim.
Section 1.165 Plant Drawings.
Section 1.166 Specimens.
Section 1.167 Examination.
Section 1.171 Application for reissue.
Section 1.172 Applicants, assignees.
Section 1.173 Reissue specification, drawings, and amendments.
Section 1.174 [Reserved]
Section 1.175 Reissue oath or declaration.
Section 1.176 Examination of reissue.
Section 1.177 Issuance of multiple reissue patents.
Section 1.178 Original patent; continuing duty of applicant.
Section 1.179 [Reserved]
Section 1.181 Petition to the Director.
Section 1.182 Questions not specifically provided for.
Section 1.183 Suspension of rules.
Section 1.184 [Reserved]
Section 1.191 Appeal to Board of Patent Appeals and Interferences.
Section 1.192 [Reserved]
Section 1.193 [Reserved]
Section 1.194 [Reserved]
Section 1.195 [Reserved]
Section 1.196 [Reserved]
Section 1.197 Return of jurisdiction from the Board of Patent Appeals and Interferences; termination of proceedings.
Section 1.198 Reopening after a final decision of the Board of Patent Appeals and Interferences.
Section 1.211 Publication of applications.
Section 1.213 Nonpublication request.
Section 1.215 Patent application publication.
Section 1.217 Publication of a redacted copy of an application.
Section 1.219 Early publication.
Section 1.221 Voluntary publication or republication of patent application publication.
Section 1.248 Service of papers; manner of service; proof of service in cases other than interferences.
Section 1.251 Unlocatable file.
Section 1.291 Protests by the public against pending applications.
Section 1.292 Public use proceedings.
Section 1.293 Statutory invention registration.
Section 1.294 Examination of request for publication of a statutory invention registration and patent application to which the request is directed.
Section 1.295 Review of decision finally refusing to publish a statutory invention registration.
Section 1.296 Withdrawal of request for publication of statutory invention registration.
Section 1.297 Publication of statutory invention registration.
Section 1.301 Appeal to U.S. Court of Appeals for the Federal Circuit.
Section 1.302 Notice of appeal.
Section 1.303 Civil action under 35 U.S.C. 145, 146, 306.
Section 1.304 Time for appeal or civil action.
Section 1.311 Notice of Allowance.
Section 1.312 Amendments after allowance.
Section 1.313 Withdrawal from issue.
Section 1.314 Issuance of patent.
Section 1.315 Delivery of patent.
Section 1.316 Application abandoned for failure to pay issue fee.
Section 1.317 Lapsed patents; delayed payment of balance of issue fee.
Section 1.318 [Reserved]
1.321Statutory disclaimers, including terminal disclaimers.
Section 1.322 Certificate of correction of Office mistake.
Section 1.323 Certificate of correction of applicant's mistake.
Section 1.324 Correction of inventorship in patent, pursuant to 35 U.S.C. 256.
Section 1.325 Other mistakes not corrected.
Section 1.331 [Reserved]
Section 1.332 [Reserved]
Section 1.333 [Reserved]
Section 1.334 [Reserved]
Section 1.335 Filing of notice of arbitration awards
Section 1.351 Amendments to rules will be published.
Section 1.352 [Reserved]
Section 1.362 Time for payment of maintenance fees.
Section 1.363 Fee address for maintenance fee purposes.
Section 1.366 Submission of maintenance fees.
Section 1.377 Review of decision refusing to accept and record payment of a maintenance fee filed prior to expiration of patent.
Section 1.378 Acceptance of delayed payment of maintenance fee in expired patent to reinstate patent.
Subpart C - International Processing Provisions
GENERAL INFORMATION
Section 1.401 Definitions of terms under the Patent Cooperation Treaty.
Section 1.412 The United States Receiving Office.
Section 1.413 The United States International Searching Authority.
Section 1.414 The United States Patent and Trademark Office as a Designated Office or Elected Office.
Section 1.415 The International Bureau.
Section 1.416 The United States International Preliminary Examining Authority.
Section 1.417 Submission of translation of international publication.
Section 1.419 Display of currently valid control number under the Paperwork Reduction Act.
Section 1.421 Applicant for international application.
Section 1.422 When the inventor is dead.
Section 1.423 When the inventor is insane or legally incapacitated.
Section 1.424 [Reserved]
Section 1.425 [Reserved]
Section 1.431 International application requirements.
Section 1.432 Designation of States by filing an international application.
Section 1.433 Physical requirements of international application.
Section 1.434 The request.
Section 1.435 The description.
Section 1.436 The claims.
Section 1.437 The drawings.
Section 1.438 The abstract.
Section 1.445 International application filing, processing and search fees.
Section 1.446 Refund of international application filing and processing fees.
Section 1.451 The priority claim and priority document in an international application.
Section 1.455 Representation in international applications.
Section 1.461 Procedures for transmittal of record copy to the International Bureau.
Section 1.465 Timing of application processing based on the priority date.
Section 1.468 Delays in meeting time limits.
Section 1.471 Corrections and amendments during international processing.
Section 1.472 Changes in person, name, or address of applicants and inventors.
Section 1.475 Unity of invention before the International Searching Authority, the International Preliminary Examining Authority and during the national stage.
Section 1.476 Determination of unity of invention before the International Searching Authority.
Section 1.477 Protest to lack of unity of invention before the International Searching Authority.
Section 1.480 Demand for international preliminary examination.
Section 1.481 Payment of international preliminary examination fees.
Section 1.482 International preliminary examination fees.
Section 1.484 Conduct of international preliminary examination.
Section 1.485 Amendments by applicant during international preliminary examination.
Section 1.488 Determination of unity of invention before the International Preliminary Examining Authority.
Section 1.489 Protest to lack of unity of invention before the International Preliminary Examining Authority.
Section 1.491 National stage commencement and entry.
Section 1.492 National stage fees.
Section 1.494 [Reserved]
Section 1.495 Entering the national stage in the United States of America.
Section 1.496 Examination of international applications in the national stage.
Section 1.497 Oath or declaration under 35 U.S.C. 371(c)(4).
Section 1.499 Unity of invention during the national stage.
Subpart D - Ex Parte Reexamination of Patents
CITATION OF PRIOR ART
Section 1.501 Citation of prior art in patent files.
Section 1.502 Processing of prior art citations during an ex parte reexamination proceeding.
Section 1.510 Request for ex parte reexamination.
Section 1.515 Determination of the request for ex parte reexamination.
Section 1.520 Ex parte reexamination at the initiative of the Director.
Section 1.525 Order for ex parte reexamination.
Section 1.530 Statement by patent owner in ex parte reexamination; amendment by patent owner in ex parte or inter partes reexamination; inventorship change in ex parte or inter partes reexamination.
Section 1.535 Reply by third party requester in ex parte reexamination.
Section 1.540 Consideration of responses in ex parte reexamination.
Section 1.550 Conduct of ex parte reexamination proceedings.
Section 1.552 Scope of reexamination in ex parte reexamination proceedings.
Section 1.555 Information material to patentability in ex parte reexamination and inter partes reexamination proceedings.
Section 1.560 Interviews in ex parte reexamination proceedings.
Section 1.565 Concurrent office proceedings which include an ex parte reexamination proceeding.
Section 1.570 Issuance and publication of ex parte reexamination certificate concludes ex parte reexamination proceeding.
Subpart E - [Reserved]
Subpart F - Adjustment and Extension of Patent Term
ADJUSTMENT OF PATENT TERM DUE TO EXAMINATION DELAY
Section 1.701 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).
Section 1.702 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).
Section 1.703 Period of adjustment of patent term due to examination delay.
Section 1.704 Reduction of period of adjustment of patent term.
Section 1.705 Patent term adjustment determination.
Section 1.710 Patents subject to extension of the patent term.
Section 1.720 Conditions for extension of patent term.
Section 1.730 Applicant for extension of patent term; signature requirements.
Section 1.740 Formal requirements for application for extension of patent term; correction of informalities.
Section 1.741 Complete application given a filing date; petition procedure.
Section 1.750 Determination of eligibility for extension of patent term.
Section 1.760 Interim extension of patent term under 35 U.S.C. 156(e)(2).
Section 1.765 Duty of disclosure in patent term extension proceedings.
Section 1.770 Express withdrawal of application for extension of patent term.
Section 1.775 Calculation of patent term extension for a human drug, antibiotic drug, or human biological product.
Section 1.776 Calculation of patent term extension for a food additive or color additive.
Section 1.777 Calculation of patent term extension for a medical device.
Section 1.778 Calculation of patent term extension for an animal drug product.
Section 1.779 Calculation of patent term extension for a veterinary biological product.
Section 1.780 Certificate or order of extension of patent term.
Section 1.785 Multiple applications for extension of term of the same patent or of different patents for the same regulatory review period for a product.
Section 1.790 Interim extension of patent term under 35 U.S.C. 156(d)(5)
Section 1.791 Termination of interim extension granted prior to regulatory approval of a product for commercial marketing or use.
Subpart G - Biotechnology Invention Disclosures
DEPOSIT OF BIOLOGICAL MATERIAL
Section 1.801 Biological material.
Section 1.802 Need or opportunity to make a deposit.
Section 1.803 Acceptable depository.
Section 1.804 Time of making an original deposit.
Section 1.805 Replacement or supplement of deposit.
Section 1.806 Term of deposit.
Section 1.807 Viability of deposit.
Section 1.808 Furnishing of samples.
Section 1.809 Examination procedures.
Section 1.821 Nucleotide and/or amino acid sequence disclosures in patent applications.
Section 1.822 Symbols and format to be used for nucleotide and/or amino acid sequence data.
Section 1.823 Requirements for nucleotide and/or amino acid sequences as part of the application.
Section 1.824 Form and format for nucleotide and/or amino acid sequence submissions in computer readable form.
Section 1.825 Amendments to or replacement of sequence listing and computer readable copy thereof.
Appendix A - Sample Sequence Listing
Subpart H - Inter Partes Reexamination of Patents that Issued From an Original Application Filed in the United States on or After November 29, 1999
PRIOR ART CITATIONS
Section 1.902 Processing of prior art citations during an inter partes reexamination proceeding.
Section 1.903 Service of papers on parties in inter partes reexamination.
Section 1.904 Notice of inter partes reexamination in
Section 1.905 Submission of papers by the public in inter partes reexamination.
Section 1.906 Scope of reexamination in inter partes reexamination proceeding.
Section 1.907 Inter partes reexamination prohibited.
Section 1.913 Persons eligible to file request for inter partes reexamination.
Section 1.915 Content of request for inter partes reexamination.
Section 1.919 Filing date of request for inter partes reexamination.
Section 1.923 Examiner's determination on the request for inter partes reexamination.
Section 1.925 Partial refund if request for inter partes reexamination is not ordered.
Section 1.927 Petition to review refusal to order inter partes reexamination.
Section 1.931 Order for inter partes reexamination.
Section 1.933 Patent owner duty of disclosure in inter partes reexamination proceedings.
Section 1.935 Initial Office action usually accompanies order for inter partes reexamination.
Section 1.937 Conduct of inter partes reexamination.
Section 1.939 Unauthorized papers in inter partes reexamination.
Section 1.941 Amendments by patent owner in inter partes reexamination.
Section 1.943 Requirements of responses, written comments, and briefs in inter partes reexamination.
Section 1.945 Response to Office action by patent owner in inter partes reexamination.
Section 1.947 Comments by third party requester to patent owner's response in inter partes reexamination.
Section 1.948 Limitations on submission of prior art by third party requester following the order for inter partes reexamination.
Section 1.949 Examiner's Office action closing prosecution in inter partes reexamination.
Section 1.951 Options after Office action closing prosecution in inter partes reexamination.
Section 1.953 Examiner's Right of Appeal Notice in inter partes reexamination.
Section 1.955 Interviews prohibited in inter partes reexamination proceedings.
Section 1.956 Patent owner extensions of time in inter partes reexamination.
Section 1.957 Failure to file a timely, appropriate or complete response or comment in inter partes reexamination.
Section 1.958 Petition to revive inter partes reexamination prosecution terminated for lack of patent owner response.
Section 1.959 Appeal in inter partes reexamination.
Section 1.961 [Reserved]
Section 1.962 [Reserved]
Section 1.963 [Reserved]
Section 1.965 [Reserved]
Section 1.967 [Reserved]
Section 1.969 [Reserved]
Section 1.971 [Reserved]
Section 1.973 [Reserved]
Section 1.975 [Reserved]
Section 1.977 [Reserved]
Section 1.979 Return of Jurisdiction from the Board of Patent Appeals and Interferences; termination of proceedings.
Section 1.981 Reopening after a final decision of the Board of Patent Appeals and Interferences.
Section 1.983 Appeal to the United States Court of Appeals for the Federal Circuit in inter partes reexamination.
Section 1.985 Notification of prior or concurrent proceedings in inter partes reexamination.
Section 1.987 Suspension of inter partes reexamination proceeding due to litigation.
Section 1.989 Merger of concurrent reexamination proceedings.
Section 1.991 Merger of concurrent reissue application and inter partes reexamination proceeding.
Section 1.993 Suspension of concurrent interference and inter partes reexamination proceeding.
Section 1.995 Third party requester's participation rights preserved in merged proceeding.
Section 1.997 Issuance and publication of inter partes reexamination certificate concludes inter partes reexamination proceeding.