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(e) Whenever a decision of the Board of Patent Appeals and Interferences includes or allows a remand, that decision shall not be considered a final decision. When appropriate, upon conclusion of proceedings on remand before the examiner, the Board of Patent Appeals and Interferences may enter an order otherwise making its decision final.

(1) See $1.136(b) for extensions of time to take action under this section in a patent application and $1.550(c) for extensions of time in a reexamination proceeding. (49 FR 48453, Dec. 12, 1984, as amended at 64 FR 29662, July 13, 1989; 58 FR 54510, Oct. 22, 1993)

Board of Patent Appeals and Interferences upon the same record. The request for reconsideration shall address the new ground for rejection and state with particularity the points believed to have been misapprehended or overlooked in rendering the decision and also state all other grounds upon which reconsideration is sought. Where request for such reconsideration is made the Board of Patent Appeals and Interferences shall reconsider

the

new ground for rejection and, if necessary, render a new decision which shall include all grounds upon which a patent is refused. The decision on reconsideration is deemed to incorporate the earlier decision, except for those portions specifically withdrawn on reconsideration, and is final for the purpose of judicial review.

(c) Should the decision of the Board of Patent Appeals and Interferences include an explicit statement that a claim may be allowed in amended form, appellant shall have the right to amend in conformity with such statement which shall be binding on the examiner in the absence of new references or grounds of rejection.

(d) Although the Board of Patent Appeals and Interferences normally will confine its decision to a review of rejections made by the examiner, should it have knowledge of any grounds for rejecting any allowed claim it may include in its decision a recommended rejection of the claim and remand the case to the examiner. In such event, the Board shall set a period, not less than one month, within which the appellant may submit to the examiner an appropriate amendment, a showing of facts or reasons, or both, in order to avoid the grounds set forth in the recommendation of the Board of Patent Appeals and Interferences. The examiner shall be bound by the recommendation and shall enter and maintain the recommended rejection unless an amendment or showing of facts not previously of record is filed which, in the opinion of the examiner, overcomes the recommended rejection. Should the examiner make the recommended rejection final the applicant may again appeal to the Board of Patent Appeals and Interferences.

1.197 Action following decision.

(a) After decision by the Board of Patent Appeals and Interferences, the case shall be returned to the examiner, subject to the appellant's right of ap peal or other review, for such further action by the appellant or by the examiner, as the condition of the case may require, to carry into effect the decision.

(b) A single request for reconsideration or modification of the decision may be made if filed within one month from the date of the original decision, unless the original decision is so modified by the decision on reconsideration as to become, in effect, a new decision, and the Board of Patent Appeals and Interferences so states. The request for reconsideration shall state with particularity the points believed to have been misapprehended or overlooked in rendering the decision and also state all other grounds upon which reconsideration is sought. See $1.136(b) for extensions of time for seeking reconsideration in a patent application and $1.550(c) for extensions of time in a reexamination proceeding.

(c) Termination of proceedings. Proceedings are considered terminated by the dismissal of an appeal or the failure to timely file an appeal to the court or a civil action ($1.304) except:

(1) Where claims stand allowed in an application or

(2) Where the nature of the decision requires further action by the examiner.

The date of termination of proceedings (5) Whenever it shall be satisfactorily is the date on which the appeal is dis shown to the Commissioner that none missed or the date on which the time of the above modes of obtaining or for appeal to the court or review by serving the paper is practicable, serycivil action ($1.304) expires. If an ap ice may be by notice published in the peal to the court or a civil action has Official Gazette. been filed, proceedings are considered

(b) Papers filed in the Patent and terminated when the appeal or civil ac Trademark Office which are required tion is terminated. An appeal to the

to be served shall contain proof of servU.S. Court of Appeals for the Federal ice. Proof of service may appear on or Circuit is terminated when the man

be affixed to papers filed. Proof of servdate is received by the Office. A civil

ice shall include the date and manner action is terminated when the time to

of service. In the case of personal servappeal the judgment expires.

ice, proof of service shall also include (36 U.S.C. 6, Pub. L. 97–247; 15 U.S.C. 1113, the name of any person served, cer1123)

tified by the person who made service. (46 FR 29184, May 29, 1981, as amended at 49

Proof of service may be made by: FR 48453, Dec. 12, 1984; 54 FR 29552, July 13, (1) An acknowledgement of service by 1989; 58 FR 54610, Oct. 22, 1993)

or on behalf of the person served or

(2) A statement signed by the attorg 1.198 Reopening after decision.

ney or agent containing the informaCases which have been decided by the tion required by this section. Board of Patent Appeals and Inter (c) See $1.646 for service of papers in ferences will not be reopened or recon interferences. sidered by the primary examiner except under the provisions of 81.196

(46 FR 29184, May 29, 1981, as amended at 49

FR 48454, Dec. 12, 1984) without the written authority of the Commissioner, and then only for the

PROTESTS AND PUBLIC USE PROCEEDINGS consideration of matters not already adjudicated, sufficient cause being 8 1.291 Protests by the public against shown.

pending applications. (24 FR 10332, Dec. 22, 1959, as amended at 49 (a) Protests by a member of the pub FR 48453, Dec. 12, 1984)

lic against pending applications will be

referred to the examiner having charge MISCELLANEOUS PROVISIONS

of the subject matter involved. A pro81.248 Service of papers; manner of

test specifically identifying the appliservice; proof of service in cases

cation to which the protest is directed other than interferences.

will be entered in the application file

if: (a) Service of papers must be on the attorney or agent of the party if there

(1) The protest is timely submitted;

and be such or on the party if there is no attorney or agent, and may be made in

(2) The protest is either served upon any of the following ways:

the applicant in accordance with $1.248, (1) By delivering a copy of the paper

or filed with the Office in duplicate in to the person served;

the event service is not possible. (2) By leaving a copy at the usual Protests raising fraud or other inequiplace of business of the person served

table conduct issues will be entered in with someone in his employment;

the application file, generally without (3) When the person served has no comment on those issues. Protests usual place of business, by leaving a which do not adequately identify a copy at the person's residence, with pending patent application will be dissome person of suitable age and discre posed of and will not be considered by tion who resides there;

the Office. (4) Transmission by first class mail. (b) A protest submitted in accordance When service is by mail the date of with the second sentence of paragraph mailing will be regarded as the date of (a) of this section will be considered by service;

the Office if it includes (1) a listing of

the patents, publications or other in ting of times for taking testimony, formation relied upon; (2) a concise ex which shall be taken as provided by planation of the relevance of each list $$ 1.671 through 1.685. The petitioner ed item; (3) a copy of each listed patent will be heard in the proceedings but or publication or other item of infor after decision therein will not be heard mation in written form or at least the further in the prosecution of the applipertinent portions thereof; and (4) an cation for patent. English language translation of all the (b) The petition and accompanying necessary and pertinent parts of any papers should either: non-English language patent, publica (1) Reflect that a copy of the same tion, or other item of information in has been served upon the applicant or written form relied upon.

upon his attorney or agent of record; or (c) A member of the public filing a (2) Be filed with the Office in dupliprotest in an application under para cate in the event service is not posgraph (a) of this section will not re sible. ceive any communications from the Office relating to the protest, other than

The petition and accompanying papers, the return of a self-addressed postcard

or a notice that such a petition has which the member of the public may

been filed, shall be entered in the appliinclude with the protest in order to re

cation file. ceive an acknowledgment by the Office (c) A petition for institution of public that the protest has been received. The

use proceedings shall not be filled by a Office may communicate with the ap

party to an interference as to an appliplicant regarding any protest and may

cation involved in the interference. require the applicant to respond to spe

Public use and on sale issues in an incific questions raised by the protest. In

terference shall be raised by a prelimithe absence of a request by the Office, nary motion under $1.633(a). an applicant has no duty to, and need

(35 U.S.C. 6; 15 U.S.C. 1113, 1123) not, respond to a protest. The limited

(42 FR 5695, Jan. 28, 1977, as amended at 49 involvement of the member of the pub

FR 48454, Dec. 12, 1984) lic filing a protest pursuant to paragraph (a) of this section ends with the 1.293 Statutory invention registrafiling of the protest, and no further tion. submission on behalf of the protestor

(a) An applicant for an original patwill be considered unless such submis

ent may request, at any time during sion raises new issues which could not have been earlier presented.

the pendency of applicant's pending

complete application, that the speci[47 FR 21752, May 19, 1982, as amended at 57 fication and drawings be published as a FR 2035, Jan. 17, 1992)

statutory invention registration. Any

such request must be signed by (1) the $ 1.292 Public use proceedings.

applicant and any assignee of record or (a) When a petition for the institu (2) an attorney or agent of record in tion of public use proceedings, sup the application. ported by affidavits or declarations and (b) Any request for publication of a the fee set forth in $1.17(j) is filed by statutory invention registration must one having information of the pend include the following parts: ency of an application and is found, on (1) A waiver of the applicant's right reference to the examiner, to make a to receive a patent on the invention prima facie showing that the invention claimed effective upon the date of pubclaimed in an application believed to lication of the statutory invention regbe on file had been in public use or on istration; sale more than one year before the fil (2) The required fee for filing a reing of the application, a hearing may quest for publication of a statutory inbe had before the Commissioner to de vention registration as provided for in termine whether a public use proceed- $1.17 (n) or (o); ing should be instituted. If instituted, (3) A statement that, in the opinion the Commissioner may designate an of the requester, the application to appropriate official to conduct the pub which the request is directed meets the lic use proceeding, including the set requirements of 35 U.S.C. 112; and

(4) A statement that, in the opinion application does not meet the requireof the requester, the application to ments of 35 U.S.C. 112, the notification which the request is directed complies to applicant will include a rejection with the formal requirements of this under the appropriate provisions of 35 part for printing as a patent.

U.S.C 112. The periods for response es(c) A waiver filed with a request for a tablished pursuant to this section are statutory invention registration will subject to the extension of time provibe effective, upon publication of the

sions of $1.136. After response by the statutory invention registration, to

applicant, the application will again be waive the inventor's right to receive a

considered for publication of a statupatent on the invention claimed in the

tory invention registration. If the restatutory invention registration, in

quirements of $1.293 and this section any application for an original patent

are not timely met, the refusal to pubwhich is pending on, or filed after, the

lish will be made final. If the requiredate of publication of the statutory in

ments of 35 U.S.C. 112 are not met, the vention registration. A waiver filed

rejection pursuant to 35 U.S.C. 112 will with a request for a statutory inven

be made final. tion registration will not affect the

(c) If the examination pursuant to rights of any other inventor even if the

this section results in approval of the subject matter of the statutory inven

request for a statutory invention regtion registration and an application of

istration the applicant will be notified another inventor are commonly owned.

of the intent to publish a statutory inA waiver filed with a request for a stat

vention registration. utory invention registration will not affect any rights in a patent to the in (50 FR 9382, Mar. 7, 1985) ventor which issued prior to the date of publication of the statutory invention $ 1.295 Review of decision finally reregistration unless a reissue applica

fusing to publish a statutory invention is filed seeking to enlarge the

tion registration. scope of the claims of the patent. See (a) Any requester who is dissatisfied also $ 1.106(e).

with the final refusal to publish a stat(Approved by the Office of Management and

utory invention registration for reaBudget under control number 0651-0018)

sons other than compliance with 35 (50 FR 9382, Mar. 7, 1985)

U.S.C. 112 may obtain review of the re

fusal to publish the statutory inven8 1.294 Examination of request for tion registration by filing a petition to

publication of a statutory invention the Commissioner accompanied by the registration and patent application fee set forth in $1.17(h) within one

to which the request is directed. month or such other time as is set in (a) Any request for a statutory inven the decision refusing publication. Any tion registration will be examined to such petition should comply with the determine if the requirements of $1.293 requirements of $1.181(b). The petition have been met. The application to may include a request that the petition which the request is directed will be fee be refunded if the final refusal to examined to determine (1) if the sub publish a statutory invention registraject matter of the application is appro tion for reasons other than compliance priate for publication, (2) if the re with 35 U.S.C. 112 is determined to requirements for publication are met, sult from an error by the Patent and and (3) if the requirements of 35 U.S.C. Trademark Office. 112 and $1.293 of this part are met.

(b) Any requester who is dissatisfied (b) Applicant will be notified of the with a decision finally rejecting claims results of the examination set forth in pursuant to 35 U.S.C. 112 may obtain paragraph (a) of this section. If the re review of the decision by filing an apquirements of $1.293 and this section peal to the Board of Patent Appeals are not met by the request filed, the and Interferences pursuant to $1.191. If notification to applicant will set a pe the decision rejecting claims pursuant riod of time within which to comply to 35 U.S.C. 112 is reversed, the request with the requirements in order to avoid for a statutory invention registration abandonment of the application. If the will be approved and the registration

published if all of the other provisions of $1.293 and this section are met. (Approved by the Office of Management and Budget under control number 0651-0018) [60 FR 9382, Mar. 7, 1986)

associated with a statutory Invention registration see 36 U.S.C. 167. (60 FR 9383, Mar. 7, 1986, as amended at 60 FR 31826, Aug. 6, 1985)

REVIEW OF PATENT AND TRADEMARK

OFFICE DECISIONS BY COURT

$ 1.296 Withdrawal of request for pub

lication of statutory invention registration. A request for a statutory invention registration, which has been filed, may be withdrawn prior to the date of the notice of the intent to publish a statutory invention registration issued pursuant to $1.294(c) by filing a request to withdraw the request for publication of a statutory invention registration. The request to withdraw may also include a request for a refund of any amount paid in excess of the application filing fee and a handling fee of $130.00 which will be retained. Any request to withdraw the request for publication of a statutory invention registration filed on or after the date of the notice of intent to publish issued pursuant to $1.294(c) must be in the form of a petition pursuant to $1.183 accompanied by the fee set forth in $1.17(h). (56 FR 65153, Dec. 13, 1991)

8 1.301 Appeal to U.S. Court of Appeals

for the Federal Circuit. Any applicant or any owner of a patent involved in a reexamination proceeding dissatisfied with the decision of the Board of Patent Appeals and Interferences, and any party to an interference dissatisfied with the decision of the Board of Patent Appeals and Interferences, may appeal to the U.S. Court of Appeals for the Federal Circuit. The appellant must take the following steps in such an appeal:

(a) In the Patent and Trademark Office fille a written notice of appeal directed to the Commissioner (800 $$1.302 and 1.304); and

(b) In the Court, file a copy of the notice of appeal and pay the fee for appeal, as provided by the rules of the Court.

(54 FR 29552, July 13, 1989)

8 1.302 Notice of appeal.

(a) When an appeal is taken to the U.S. Court of Appeals for the Federal Circuit, the appellant shall give notice thereof to the Commissioner within the time specified in $1.304.

(b) In interferences, the notice must be served as provided in $1.646.

(c) A notice of appeal, if mailed to the Office, shall be addressed as follows: Box 8, Commissioner of Patents and Trademarks, Washington, DC 20231.

$ 1.297 Publication of statutory inven

tion registration. (a) If the request for a statutory invention registration is approved the statutory invention registration will be published. The statutory invention registration will be mailed to the requester at the correspondence address as provided for in $1.33(a). A notice of the publication of each statutory invention registration will be published in the Official Gazette.

(b) Each statutory invention registration published will include a statement relating to the attributes of a statutory invention registration. The statement will read as follows:

A statutory invention registration is not a patent. It has the defensive attributes of a patent but does not have the enforceable attributes of a patent. No article or advertisement or the like may use the term patent, or any term suggestive of a patent, when referring to a statutory invention registration. For more specific information on the rights

(50 FR 9383, Mar. 7, 1985, as amended at 53 FR 16414, May 9, 1988)

8 1.303 Civil action under 35 U.S.C.

145, 146, 306. (a) Any applicant or any owner of a patent involved in a reexamination proceeding dissatisfied with the decision of the Board of Patent Appeals and Interferences, and any party dissatisfied with the decision of the Board of Patent Appeals and Interferences, may, instead of appealing to the U.S.

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