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Court of Appeals for the Federal Cir (i) For good cause shown if requested cuit ($1.301), have remedy by civil ac in writing before the expiration of the tion under 35 U.S.C. 145 or 146, as ap period for filing an appeal or commencpropriate. Such civil action must be ing a civil action, or commenced within the time specified (11) Upon written request after the in $1.304.

expiration of the period for filing an (b) If an applicant in an ex parte case appeal or commencing a civil action or an owner of a patent involved in a upon a showing that the failure to act reeexamination proceeding has taken was the result of excusable neglect. an appeal to the U.S. Court of Appeals (b) The times specified in this section for the Federal Circuit, he or she there in days are calendar days. The times by waives his or her right to proceed specified herein in months are calendar under 35 U.S.C. 145.

months except that one day shall be (c) If any adverse party to an appeal added to any two-month period which taken to the U.S. Court of Appeals for includes February 28. If the last day of the Federal Circuit by a defeated party the time specified for appeal or comin an interference proceeding files no mencing a civil action falls on a Saturtice with the Commissioner within

day, Sunday or Federal holiday in the twenty days after the filing of the de District of Columbia, the time is exfeated party's notice of appeal to the tended to the next day which is neither court ($1.302), that he or she elects to a Saturday, Sunday nor a Federal holihave all further proceedings conducted day. as provided in 35 U.S.C. 146, the notice (c) If a defeated party to an interof election must be served as provided ference has taken an appeal to the U.S. in 81.646.

Court of Appeals for the Federal Cir(36 U.S.C. 6; 16 U.S.C. 1123)

cuit and an adverse party has alled no [47 FR 47381, Oct. 26, 1982, as amended at 49

tice under 35 U.S.C. 141 electing to have FR 48464, Dec. 12, 1984; 54 FR 29663, July 13,

all further proceedings

proceedings conducted 1989)

under 35 U.S.C. 146 (81.303(c)), the time

for filing a civil action thereafter is $ 1.304 Time for appeal or civil action. specified in 36 U.S.C. 141. The time for

(a)(1) The time for filling the notice of filing a cross-action expires 14 days appeal to the U.S. Court of Appeals for

after service of the summons and comthe Federal Circuit ($1.302) or for com

plaint. mencing a civil action ($1.303) is two (64 FR 29663, July 13, 1969, as amended at 68 months from the date of the decision of

FR 64602, Oct. 22, 1993) the Board of Patent Appeals and Interferences. If a request for consideration ALLOWANCE AND ISSUE OF PATENT or modification of the decision is filed within the time period provided under

81.311 Notice of allowance. $1.197(b) or $1.658(b), the time for filing (a) If, on examination, it shall appear an appeal or commencing a civil action that the applicant is entitled to a patshall expire two months after action on ent under the law, a notice of allowthe request. In interferences, the time ance will be sent to applicant at the for filing a cross-appeal or cross-action correspondence address indicated in expires:

$1.33, calling for the payment of a spec(1) 14 days after service of the notice ified sum constituting the issue fee of appeal or the summons and com ($1.18), which shall be paid within 3 plaint, or

months from the date of the mailing of (ii) Two months after the date of de the notice of allowance. cision of the Board of Patent Appeals (b) An authorization to charge the and Interferences, whichever is later. issue fee ($ 1.18) to a deposit account

(2) The time periods set forth in this may be filed in an individual applicasection are not subject to the provi tion, either before or after mailing of sions of $81.136, 1.550(c) or 1.645 (a) or the notice of allowance. Where an au(b).

thorization to charge the issue fee to a (3) The Commissioner may extend the deposit account has been filed before time for filing an appeal or commenc the mailing of the notice of allowance, ing a civil action:

the issue fee will be automatically

charged to the deposit account at the time of mailing the notice of allowance.

(35 U.S.C. 6; 16 U.S.C. 1113, 1123) (47 FR 41279, Sept. 17, 1982)

(5) For abandonment to permit consideration of an information disclosure statement under $1.97 in a continuing application. (35 U.S.C. 6; 15 U.S.C. 1113, 1123) [47 FR 41280, Sept. 17, 1982, as amendod at 57 FR 2036, Jan. 17, 1992; 60 FR 20227, Apr. 25, 1996]

81.312 Amendments after allowance.

(a) No amendment may be made as a matter of right in an application after the mailing of the notice of allowance. Any amendment pursuant to this paragraph filed before the payment of the issue fee may be entered on the recommendation of the primary examiner, approved by the Commissioner, without withdrawing the case from issue.

(b) Any amendment pursuant to paragraph (a) of this section filed after the date the issue fee is paid must be accompanied by a petition including the fee set forth in $1.17(i) and a showing of good and sufficient reasons why the amendment is necessary and was not earlier presented. (35 U.S.C. 6; 15 U.S.C. 1113, 1123) [47 FR 41280, Sept. 17, 1982, as amended at 58 FR 54510, Oct. 22, 1993; 60 FR 20227, Apr. 25, 1995]

81.314 Issuance of patent.

If payment of the issue fee is timely made, the patent will issue in regular course unless the application is withdrawn from issue ($1.313), or issuance of the patent is deferred. Any petition by the applicant requesting a deferral of the issuance of a patent must be accompanied by the fee set forth in $1.17(i) and must include a showing of good and sufficient reasons why it is necessary to defer issuance of the pat ent.

[60 FR 20227, Apr. 25, 1996)

8 1.316 Delivery of patent.

The patent will be delivered or mailed on the day of its date to the attorney or agent of record, if there be one; or if the attorney or agent so request, to the patentee or assignee of an interest therein; or, if there be no attorney or agent, to the patentee or to the assignee of the entire interest, if he so request. (35 U.S.C. 151)

81.313 Withdrawal from issue.

(a) Applications may be withdrawn from issue for further action at the initiative of the Office or upon petition by the applicant. Any such petition by the applicant must include a showing of good and sufficient reasons why withdrawal of the application is necessary and, if the reason for the withdrawal is not the fault of the Office, must be accompanied by the fee set forth in $1.17(i). If the application is withdrawn from issue, a new notice of allowance will be sent if the application is again allowed. Any amendment accompanying a petition to withdraw an application from issue must comply with the requirements of $1.312.

(b) When the issue fee has been paid, the application will not be withdrawn from issue for any reason except:

(1) A mistake on the part of the Of

g 1.316 Application abandoned for fail

ure to pay issue fee. (a) If the issue fee is not paid within 3 months from the date of the notice of allowance, the application will be regarded as abandoned. Such an abandoned application will not be considered as pending before the Patent and Trademark Office.

(b) The Commissioner may accept the payment of the issue fee later than three months after the mailing of the notice of allowance as though no abandonment had ever occurred if upon petition the delay in payment is shown to have been unavoidable. The petition to accept the delayed payment must be promptly filed after the applicant is notified of, or otherwise becomes aware of, the abandonment, and must be accompanied by:

fice;

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(1) The issue fee, unless it has been previously submitted;

(2) The fee for delayed payment ($1.17(1)); and

(3) A showing that the delay was unavoidable. The showing must be a verified showing if made by a person not registered to practice before the Patent and Trademark Office.

(c) The Commissioner may, upon petition, accept the payment of the issue fee later than three months after the mailing of the notice of allowance as though no abandonment had ever occurred if the delay in payment was unintentional. The petition to accept the delayed payment must be:

(1) Accompanied by the issue fee, unless it has been previously submitted;

(2) Accompanied by the fee for unintentionally delayed payment (81.17(m));

(3) Accompanied by a statement that the delay was unintentional. The statement must be a verified statement if made by a person not registered to practice before the Patent and Trademark Office. The Commissioner may require additional information where there is a question whether the delay was unintentional; and

(4) Filed either:

(i) Within one year of the date on which the application became abandoned; or

(ii) Within three months of the date of the first decision on a petition under paragraph (b) of this section which was filed within one year of the date on which the application became abandoned.

(d) In all applications filed before June 8, 1995, any petition pursuant to paragraph (b) of this section not filed within six months of the date of abandonment of the application, must be accompanied by a terminal disclaimer with fee under $1.321 dedicating to the public a terminal part of the term of any patent granted thereon equivalent to the period of abandonment of the ap plication. The terminal disclaimer must also apply to any patent granted on any continuing application entitled under 35 U.S.C. 120 to the benefit of the filing date of the application for which revival is sought.

(e) Any request for reconsideration or review of a decision refusing to accept

the delayed payment upon petition filed pursuant to paragraphs (b) or (c) of this section, to be considered timely, must be filed within two months of the decision refusing to accept the delayed payment or within such time as set in the decision.

(1) The time periods set forth in this section cannot be extended, except that the three-month period set forth in paragraph (c)(4)(ii) of this section and the time period set forth in paragraph (e) of this section may be extended under the provisions of $1.136. (35 U.S.C. 6; 15 U.S.C. 1113, 1123) (47 FR 41280, Sept. 17, 1982, as amended at 58 FR 44281, Aug. 20, 1983; 60 FR 20228, Apr. 25, 1996) 81.317 Lapsed patents; delayed pay

ment of balance of issue fee. (a) If the issue fee paid is the amount specified in the Notice of Allowance, but a higher amount is required at the time the issue fee is paid, any remaining balance of the issue fee is to be paid within three months from the date of notice thereof and, if not paid, the patent will lapse at the termination of the three-month period.

(b) The Commissioner may accept the payment of the remaining balance of the issue fee later than three months after the mailing of the notice thereof as though no lapse had ever occurred if upon petition the delay in payment is shown to have been unavoidable. The petition to accept the delayed payment must be promptly filed after the applicant is notified of, or otherwise becomes aware of, the lapse, and must be accompanied by:

(1) The remaining balance of the issue fee, unless it has been previously submitted;

(2) The fee for delayed payment (81.17(1)); and

(3) A showing that the delay was unavoidable. The showing must be a verified showing if made by a person not registered to practice before the Patent and Trademark Office.

(c) The Commissioner may, upon petition, accept the payment of the remaining balance of the issue fee later than three months after the mailing of the notice thereof as though no lapse had ever occurred if the delay in payment was unintentional. The petition

to accept the delayed payment must be:

(1) Accompanied by the remaining balance of the issue fee, unless it has been previously submitted;

(2) Accompanied by the fee for unintentionally delayed payment (81.17(m));

(3) Accompanied by a statement that the delay was unintentional. The statement must be a verified statement if made by a person not registered to practice before the Patent and Trademark Office. The Commissioner may require additional information where there is a question whether the delay in payment was unintentional; and

(4) Filed either:

(1) Within one year of the date on which the patent lapsed; or

(ii) Within three months of the date of the first decision on a petition under paragraph (b) of this section which was filed within one year of the date on which the patent lapsed.

(d) (Reserved)

(e) Any request for reconsideration or review of a decision refusing to accept the delayed payment upon petition filed pursuant to paragraphs (b) or (c) of this section, to be considered timely, must be filed within two months of the decision refusing to accept the delayed payment or within such time as set in the decision.

(1) The time periods set forth in this section cannot be extended, except that the three-month period set forth in paragraph (c)(4)(ii) and the time period set forth in paragraph (e) of this section may be extended under the provisions of $1.136. (68 FR 44281, Aug. 20, 1983, as amended at 60 FR 20228, Apr. 25, 1996)

an

$ 1.318 Notification of national publi

cation of a patent based on

DISCLAIMER

81.321 Statutory disclaimers, includ

ing terminal disclaimers. (a) A patentee owning the whole or any sectional interest in a patent may disclaim any complete claim or claims in a patent. In like manner any patentee may disclaim or dedicate to the public the entire term, or any terminal part of the term, of the patent granted. Such disclaimer is binding upon the grantee and its successors or assigns. A notice of the disclaimer published in the Official Gazette and attached to the printed copies of the specification. The disclaimer, to be recorded in the Patent and Trademark Office, must:

(1) Be signed by the patentee, or an attorney or agent of record;

(2) Identify the patent and complete claim or claims, or term being disclaimed. A disclaimer which is not a disclaimer of a complete claim or claims, or term will be refused recordation;

(3) State the present extent of patentee's ownership interest in the patent; and

(4) Be accompanied by the fee set forth in $1.20(d).

(b) An applicant or assignee may disclaim or dedicate to the public the ontire term, or any terminal part of the term, of a patent to be granted. Such terminal disclaimer is binding upon the grantee and its successors or assigns. The terminal disclaimer, to be recorded in the Patent and Trademark Office, must:

(1) Be signed:
(i) By the applicant, or

(ii) If there is an assignee of record of an undivided part interest, by the applicant and such assignee, or

(iii) If there is an assignee of record of the entire interest, by such assignee, or

(iv) By an attorney or agent of record;

(2) Specify the portion of the term of the patent being disclaimed;

(3) State the present extent of applicant's or assignee's ownership interest in the patent to be granted; and

(4) Be accompanied by the fee set forth in $1.20(d).

(c) A terminal disclaimer, when filed to obviate a double patenting rejection

international application. The Office will notify the International Bureau when a patent is issued on an application filed under 35 U.S.C. 371, and there has been no previous international publication. (Pub. L. 94-131, 89 Stat. 685) (43 FR 20466, May 11, 1978)

in a patent application or in a reexamination proceeding, must:

(1) Comply with the provisions of paragraphs (b)(2) through (b)(4) of this section;

(2) Be signed in accordance with paragraph (b)(1) of this section if filed in a patent application, or in accordance with paragraph (a)(1) of this section if filed in a reexamination proceeding; and

(3) Include a provision that any patent granted on that application or any patent subject to the reexamination proceeding shall be enforceable only for and during such period that said patent is commonly owned with the application or patent which formed the basis for the rejection. (58 FR 64510, Oct. 22, 1993)

good faith, the Commissioner may, upon payment of the fee set forth in $1.20(a), issue a certificate, if the correction does not involve such changes in the patent as would constitute new matter or would require reexamination. A request for a certificate of correction of a patent involved in an interference shall comply with the requirements of this section and shall be accompanied by a motion under $1.635. (49 FR 48454, Dec. 12, 1984)

CORRECTION OF ERRORS IN PATENT

1.324 Correction of inventorship in

patent. Whenever a patent is issued and it appears that the correct inventor or inventors were not named through error without deceptive intention on the part of the actual inventor or inventors, the Commissioner may, on petition of all the parties and the assignees and satisfactory proof of the facts and payment of the fee set forth in $1.20(b), or on order of a court before which such matter is called in question, issue a certificate naming only the actual inventor or inventors. A request to correct inventorship of a patent involved in an interference shall comply with the requirements of this section and shall be accompanied by a motion under $1.634. (49 FR 48454, Dec. 12, 1984; 50 FR 23123, May 31, 1985)

81.322 Certificate of correction of Of

fice mistake. (a) A certificate of correction under 35 U.S.C. 254 may be issued at the request of the patentee or the patentee's assignee. Such certificate will not be issued at the request or suggestion of anyone not owning an interest in the patent, nor on motion of the Office, without first notifying the patentee (including any assignee of record) and affording the patentee an opportunity to be heard. When the request relates to a patent involved in an interference, the request shall comply with the requirements of this section and shall be accompanied by a motion under $1.635.

(b) If the nature of the mistake on the part of the Office is such that a certificate of correction is deemed inappropriate in form, the Commissioner may issue a corrected patent in lieu thereof as a more appropriate form for certificate of correction, without expense to the patentee. (35 U.S.C. 254) [24 FR 10332, Dec. 22, 1969, as amended at 49 FR 48464, Dec. 12, 1984)

8 1.325 Other mistakes not corrected.

Mistakes other than those provided for in $81.322, 1.323, 1.324, and not affording legal grounds for reissue or for reexamination, will not be corrected after the date of the patent. (35 U.S.C. 6, Pub. L. 97–247) (48 FR 2714, Jan. 20, 1983)

ARBITRATION AWARDS

8 1.331-1.334 [Reserved]

g 1.323 Certificate of correction of ap

plicant's mistake. Whenever a mistake of a clerical or typographical nature or of minor character which was not the fault of the Office, appears in a patent and a showing is made that such mistake occurred in

g 1.335 Filing of notice of arbitration

awards. (a) Written notice of any award by an arbitrator pursuant to 35 U.S.C. 294 must be filed in the Patent and Trademark Office by the patentee, or the patentee's assignee or licensee. If the award involves more than one patent a

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