« iepriekšējāTurpināt »
in the English language and such other information as he deems necessary.
"(c) In like manner and subject to the same conditions and requirements, the right provided in this section may be based upon a subsequent regularly filed application in the same foreign country instead of the first filed foreign application: Provided, That any foreign application filed prior to such subsequent application has been withdrawn, abandoned, or otherwise disposed of without having been laid open to public inspection and without leaving any rights outstanding, and has not served, nor thereafter shall serve, as a basis for claiming a right of priority.
"(d) When the application claiming priority under this section, discloses subject matter relating to a process involving the action of a micro-organism not already known and available to the public or to a product of such a process and an approved deposit is made under section 112(e) of this title, the approved deposit shall be considered to have been made on the earliest date that an application in a foreign country, the priority of which is being claimed, contains a reference identifying a deposit of the same micro-organism made in a public depository.
“(e) Applications for inventors' certificates filed in a foreign country in which applicants have a right to apply, at their discretion, either for a patent or for an inventor's certificate shall be treated in this country in the same manner and have the same effect for purpose of the right of priority under this section as applications for patent, subject to the same conditions and requirements of this section as apply to applications for patent: Provided, That such applicants are entitled to the benefits of the Stockholm Revision of the Paris Convention at the time of such filing. "§ 120. Benefit of earlier filing date in the United States
“(a) If an applicant seeks to obtain a patent on subject matter disclosed in an application previously filed in the United States, he shall, subject to the provisions of section 104 of this title, be entitled to the benefit of such earlier filing date, if
“(1) the subject matter common to the two applications, and on which he seeks a patent in the later application, was expressly disclosed, in the manner required by section 112(a) of this chapter, in the previous application; and
“(2) the subject matter of the two applications has the same inventor for the common claims thereof; and
“(3) the applicant specifically claims in the specification the benefit of the date of filing the previous application for the subject matter claimed in the second application, at the time he files the second application; and “(4) the second application is filed prior to the earlier of—
“(A) the patenting of the previous application, or
“(D) the filing by the applicant of an appeal under section 134 of this title therein, or
“(E) one year from the public availability of the subject matter disclosed in the previous application under section 122 of this chapter (or, in the case of deferred examination of the previous application, pursuant to chapter 18 of this title, one year from the com
mencement of examination of the previous application). "(b) Subject to the limitations of this section, if the previous application referred to in subsection (a) of this section is entitled to the benefit of the date of an application in a foreign country under section 119 of this chapter, with respect to the subject matter sought to be patented in the later application, then the later application referred to in subsection (a) of this section shall be entitled to the benefit of such date.
"(c) When any applicant who seeks to obtain the benefit of an earlier filing date has made any changes in the specification of the later application, with respect to the allegedly common subject matter, the burden shall be on such applicant to persuade the Office that the subject matter of such changes was expressly disclosed in the previous application. Whenever the applicant includes new matter in an application, for which he seeks the benefit provided by subsection (a) of this section, the applicant shall particularly point out whatever new matter he adds, designated as such, in a separate portion of the specification; and such matter shall not enjoy the benefit provided by said subsection. “Ş 122. Public availability, publication, and confidential status of application
“(a) The Commissioner shall, prior to the date of first examination, in accordance with such regulations as he may prescribe, promptly index and make available for public inspection and copying all pending applications for patent, and any papers filed during the prosecution thereof, except as provided in subsection (b) of this section. Abandoned patent applications, and ans papers filed during the prosecution thereof, shall be indexed and maintained available for public inspection and copying.
*(b) The Commissioner may keep such pending applications and papers (including new matter in continuing applications as designated by the applicant pursuant to section 120(c) of this chapter) secret until completion of review, if any, of the application, pursuant to section 181 of this title. No sach period of secrecy shall exceed six months from the actual filing date of the application in the United States, or, in the case of new matter in a continuing application (designated as new matter by the applicant pursuant to section 120(c) of this chapter), six months from the date of filing said continuing application, unless the application has been ordered to be kept secret pursuant to section 181 of this title.
"(c) Under regulations prescribed by the Commissioner, a pending application for patent shall be published promptly after such application is made available for public inspection and copying pursuant to subsection (a) of this section. Where necessary to correct formal defects, action may be taken under sections 132 and 133 of this title to place the application in condition for publication.
"CHAPTER 12.-EXAMINATION OF APPLICATION "Sec. *131. Examination of application. "132. Examination proceedings. "133. Time for prosecuting application. “134. Appeal to the Board of Appeals. “135. Examination or reexamination on the basis of patents, publications, or
information, cited or furnished by others. "136. Procedures in priority of invention contest. "137. Participation of parties. "138. Effect of proceedings before Patent Office. "139. Settlement agreements. “140. Burden of persuasion. *131. Examination of application
“(a) The Commissioner shall cause an examination to be made of the application and the subject matter sought to be patented, in an examination proceeding, as specified in section 132 of this chapter. If on such examination it appears that the applicant is entitled to a patent under the law, the Commissioner shall issue a patent therefor.
“(b) The applicant shall, pursuant to such rules and within such time as the Commissioner shall prescribe, submit:
“(1) copies of or citations to those patents, publications, or other prior art or evidence of the state of the art which the applicant has considered in connection with such application for patent, the disclosure of which is necessary to make the application as a whole not misleading; and
“(2) an explanation as to why the claims in such application are
patentable over such matter. The applicant shall, if he considered no specific prior art in connection with his application, submit a statement to that effect and an explanation as to why he believes that the claims in such application are patentable. In any proceeding in which alleged fraud or misuse is predicated upon failure to comply with this subsection, the burden of proof shall be upon the party asserting such fraud or misuse. "Q 132. Eramination proceedings
“(a) The Commissioner shall provide for the assignment of applications to primary examiners, in accordance with such general system of technical
classification of patentable subject matter as the Commissioner shall establish and publish. The primary examiner shall be the presiding officer in the examination proceeding. He shall examine the specification and claims therein, or cause them to be examined in the first instance by another examiner, and shall determine whether the subject matter sought to be patented is patentable. The primary examiner may at any time request the Public Counsel to intervene and participate in any proceeding.
“(b) Whenever, in an examination proceeding, the primary examiner grants or rejects any claim of an application, makes any objection or requirement, or renders any other decision, he shall notify all parties of record. If, after service of such decision, any party of record requests reexamination, with or without amendment, the primary examiner shall reexamine the application and render a decision. The examiner may decline to reexamine the application after having once reexamined it at the instance of the party of record requesting such reexamination.
“(c) All decisions by a primary examiner shall be a written part of the record in the Office, and shall include:
“(1) findings and conclusions, and the reasons or basis therefor, on all material issues of fact, law, or discretion presented ; and
“(2) an appropriate order; and
“(3) such information and references as the primary examiner may deem useful to the applicant in evaluating the desirability of continuing the prosecution of the application; and
“(4) a complete narrative report of all matters discussed in personal meetings, telephone discussions, or other communications between an examiner and an applicant, or his representatives, relating to the patent
application under examination. Statements of reasons may be long or short as the nature of the case may require.
“(d) No amendment shall introduce new matter into the disclosure of the invention. Whenever any change is made in the disclosure, the burden shall be on the applicant to persuade the Office that the matter is not new.
“(e) The applicant may present amended or new claims for reexamination of his application, but no such claims shall materially enlarge the scope of the claims of the application. Nothing contained in this subsection shall preclude any applicant from utilizing the procedures permitted by section 120 of this title.
"(f) If the subject matter sought to be patented in an application appears to relate to two or more classes of patentable subject matter, as established pursuant to subsection (a) of this section, or if the needs of administration of the Office otherwise appear so to require, the Commissioner may require examination by two or more primary examiners, for which additional exami. nation the Commissioner may prescribe additional examination fees in accordance with section 41(a) of this title. "§ 133. Time for prosecuting application
“T'pon failure of the applicant to prosecute the application within six months after any action therein, of which notice has been given or mailed to the applicant, or within such shorter time, not less than one month, as fixed by the primary examiner in such action, the application shall be regarded as abandoned, unless it be shown to the satisfaction of the primary examiner that such delay was unavoidable. "S 134. Appeal to the Board of Appeals
“(a) The appeal from any final decision of the primary examiner shall be to the Board of Appeals. The Public Counsel shall be responsible for briefing and arguing the case before the Board of Appeals in respect to any appeal taken by any applicant, except in respect to priority of invention contests pursuant to section 136 of this chapter, in which case participation of the Publie Counsel shall be at his discretion.
“(b) If any appeal is taken to the Board of Appeals, the primary examiner may, within such time as the Commissioner may by regulation prescribe, prepare a legal opinion elaborating and explaining the decision and statement made by him pursuant to section 132 of this chapter. The primary examiner shall not, in any appeal, otherwise appear before the Board of Appeals.
"(c) In any proceeding before the Board of Appeals, any party may introduce into the record any patents, publications, or other evidence of the state of the art not previously made part of the record ; and may seek to reverse the decision of the primary examiner on the basis thereof. The Board may consider the patentability of any claim in the application, de novo, or remand any proceeding to the primary examiner for reconsideration in the light of such or other further information, including any adduced by the Board, sua sponte.
"(d) Proceedings before the Board of Appeals shall be open to the public and a transcript of any hearing shall be kept. The Board of Appeals shall ren
der a written decision which shall be entered of record and govern further to proceedings in the case. The decision of the Board shall constitute final ado ministrative action by the Office. "135. Examination or reeramination on the basis of patents, publications,
or information cited or funished by others “(a) Any party or other person may, after an application for patent becomes publicly available under section 122 of this title and until notice of allowance of a patent thereon, notify the Commissioner of patents, publications, other documentary or tangible evidence of the state of the art, or any other information, which may have a bearing on the patentability of any claim of said patent application, together with any explanation thereof which such person deems appropriate.
"(b) The Commissioner shall cause the claims of the patent application to be examined or reexamined by the primary examiner in the light of matter submitted pursuant to subsection (a) of this section, in such proceedings as the Commissioner shall by regulation establish. In any such proceeding, the primary examiner shall determine the patentability of the subject matter, pursuant to section 132 of this chapter.
"(c) The Commissioner shall inform the applicant of the receipt of a notice under this section, not later than one month after the receipt thereof. The applicant may present amended or new claims for such examination or re
examination, but no such claims shall enlarge the scope of the claims of the | application. Failure of the applicant to prosecute in accordance with section
133 of this title shall result in the abandonment of his application. No patent shall issue until completion of the examination or reexamination of any such
"(d) The party, or other person, making the notification under subsection (a) of this section may participate as a party in the examination or reexami
nation proceeding, unless he elects not to be identified. In such case, the Bled
Patent Office shall give no information concerning the identity of such peris son, without his authority, unless such information is necessary to carry out ire the provisions of an Act of Congress or by reason of such special circum
stances, as may be determined by the Commissioner to effectuate the purposes of this title. "g 136. Procedures in priority of invention contest
“(a) Whenever there are two or more pending applications naming different jí
inventors and claiming the same or substantially the same subject matter, the patent shall ordinarily be issued on the application having the earliest actual filing date in the United States, if such application is otherwise allowable, and any applications having later actual filing dates in the United States with respect to such subject matter shall be rejected on the basis of such patent.
"(b) The priority of invention between or among applications subject to
subsection (a) of this section shall be determined by the primary examiner 21 in a proceding in accordance with such rules as the Commissioner shall establish, if :
“(1) the later filed application is otherwise allowable;
“(2) the applicant therefor makes a prima facie showing of invention, as the same is defined pursuant to section 104 of this title, with respect to the date of invention stated pursuant to section 112(a) of this title ; and
“(3) such applicant offers to present evidence in support of such showing, within such time as the Commissioner shall prescribe by rules, after rejection of his claims.
“(c) (1) Subject to paragraph (2) of this subsection, whenever an other wise allowable claim of an application is for the same or substantially the same subject matter as a claim of an issued patent having an actual filing date in the United States later than that of such application, or such appli cation discloses subject matter over which a claim of such patent is unpatent able, the primary examiner shall, on his own or any party's motion, initiate a proceeding to determine priority of invention.
*(2) No claim for the same or substantially the same subject matter as a claim of an issued patent shall be allowed unless such claim is made within one year after the date on which the patent was granted. Nothing contained in this paragraph shall, however, preclude any person from asserting the unpatentability to the patentee of the subject matter of such a claim, by reason of the prior activity of the applicant.
“(d) If two or more otherwise allowable applications claim the same substantially the same matter and have the same actual filing date in the United States, or one or more otherwise allowable applications and an issued patent claim the same or substantially the same subject matter and have the same actual filing date in the United States, the primary examiner shall initiate a proceeding to determine priority.
“(e) Failure of the applicant to proceed under subsections (b), (c), or (d) within the time specified shall preclude such applicant from asserting priority of invention with respect to the subject matter claimed in the patent for the purpose of obtaining a patent. Failure of the patentee to proceed under subsection (c) or (d) of this section within the time specified shall operate to cancel such claim from the patent, and notice thereof shall be endorsed on copies of the specification of the patent thereafter distributed by the Patent Office.
“(f) In any proceeding under this section, the primary examiner, or any party, may raise the question of the patentability of any claim which is involved in the proceeding, and such question shall be determined in the proceeding. "§ 137. Participation of parties
“Any party may at any time participate or intervene in any proceeding arising pursuant to this title, or initiate, participate, or intervene in any appeal therefrom, and thereby shall become a party of record. “138. Effect of proceedings before Patent Office
“(a) A final decision by the Patent Office adverse to a claim of an issued patent from which no appeal or other review has been or can be taken or had shall constitute cancellation of such claim from the patent, and notice thereof shall be endorsed on copies of the specification of the patent thereafter distributed by the Patent Office.
“(b) Except as otherwise provided in this title, no party or other person shall be foreclosed, estopped, or in any way prejudiced with respect to the assertion of any claim or any defense in any proceeding in any court by reason of his, or any other party's or other person's, having proceeded or failed to proceed in accordance with the provisions of this title. Nothing contained in this title shall be construed to supersede the jurisdiction of any Federal court or agency, nor to make any proceeding before such court or agency subject to the primary jurisdiction of the Patent Office. "S 139. Settlement agreements
“(a) Any agreement or understanding between parties to a proceeding under this chapter, including any collateral agreements referred to therein, made in connection with or in contemplation of the termination of the proceeding, shall be in writing. A copy thereof shall be filed in the Patent Office hefore the termination of the proceeding as between such parties. The copy shall be made part of the public record of the proceeding.
** (1)) Failure to file such agreement or understanding shall render such agreement or understanding and any patent issued in connection with such proceeding permanently unenforceable. "S 140. Burden of persuasion
"In all proceedings in the Patent Office, the applicant shall have the burden of persuading the Office that a claim is patentable.