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(b) Oral hearings may be held at the discretion of the Commissioner. [24 FR 10332, Dec. 22, 1969, as amended at 58 FR 54511, Oct. 22, 1993)

MAINTENANCE FEES

separate notice must be filed for placement in the file of each patent. The notice must set forth the patent number, the names of the inventor and patent owner, and the names and addresses of the parties to the arbitration. The notice must also include a copy of the award.

(b) If an award by an arbitrator pursuant to 35 U.S.C. 294 is modified by a court, the party requesting the modification must file in the Patent and Trademark Office, a notice of the modification for placement in the file of each patent to which the modification applies. The notice must set forth the patent number, the names of the inventor and patent owner, and the names and addresses of the parties to the arbitration. The notice must also include a copy of the court's order modifying the award.

(c) Any award by an arbitrator pursuant to 35 U.S.C. 294 shall be unenforceable until any notices required by paragraph (a) or (b) of this section are filed in the Patent and Trademark Office. If any required notice is not filed by the party designated in paragraph (a) or (b) of this section, any party to the arbitration proceeding may file such a notice. (35 U.S.C. 6, Pub. L. 97–247) (48 FR 2714, Jan. 20, 1983)

8 1.362 Time for payment of mainte

pance fees. (a) Maintenance fees as set forth in $$ 1.20 (e) through (8) are required to be paid in all patents based on applications filled on or after December 12, 1980, except as noted in paragraph (b) of this section, to maintain a patent in force beyond 4, 8 and 12 years after the date of grant.

(b) Maintenance fees are not required for any plant patents or for any design patents. Maintenance fees are not required for a reissue patent if the patent being reissued did not require maintenance fees.

(c) The application filing dates for purposes of payment of maintenance fees are as follows:

(1) For an application not claiming benefit of an earlier application, the actual United States filing date of the application.

(2) For an application claiming benefit of an earlier foreign application under 35 U.S.C. 119, the United States filing date of the application.

(3) For a continuing (continuation, division, continuation-in-part) application claiming the benefit of a prior patent application under 35 U.S.C. 120, the actual United States filing date of the continuing application.

(4) For a reissue application, including a continuing reissue application claiming the benefit of a reissue application under 35 U.S.C. 120, United States filing date of the original nonreissue application on which the patent reissued is based.

(5) For an international application which has entered the United States as a Designated Office under 35 U.S.C. 371, the international filing date granted under Article 11(1) of the Patent Cooperation Treaty which is considered to be the United States filing date under 35 U.S.C. 363.

(d) Maintenance fees may be paid in patents without surcharge during the periods extending respectively from:

AMENDMENT OF RULES

$ 1.351 Amendments to rules will be

published. All amendments to the regulations in this part will be published in the Official Gazette and in the FEDERAL REGISTER.

$ 1.352 Publication of notice of pro

posed amendments. (a) Whenever required by law, notice of proposed amendments to the regulations in this part will be published in the Official Gazette and in the FEDERAL REGISTER. If not published with the notice, copies of the text will be furnished to any person requesting the same. All comments, suggestions, and briefs received within a time specified in the notice will be considered before adoption of the proposed amendments which may be modified in the light thereof.

(1) 3 years through 3 years and 6 8 1.363 Fee address for maintenance months after grant for the first main

fee purposes. tenance fee,

(a) All notices, receipts, refunds, and (2) 7 years through 7 years and 6

other communications relating to paymonths after grant for the second

ment or refund of maintenance fees maintenance fee, and

will be directed to the correspondence (3) 11 years through 11 years and 6

address used during prosecution of the months after grant for the third main

application as indicated in $1.33(a) untenance fee.

less: (e) Maintenance fees may be paid (1) A fee address for purposes of paywith the surcharge set forth in $1.20(h)

ment of maintenance fees is set forth during the respective grace periods

when submitting the issue fee, or after:

(2) A change in the correspondence (1) 3 years and 6 months and through

address for all purposes is filed after the day of the 4th anniversary of the

payment of the issue fee, or grant for the first maintenance fee.

(3) A fee address or a change in the (2) 7 years and 6 months and through

"fee address" is filed for purposes of rethe day of the 8th anniversary of the

ceiving notices, receipts and other corgrant for the second maintenance fee,

respondence relating to the payment of and

maintenance fees after the payment of (3) 11 years and 6 months and through

the issue fee, in which instance, the the day of the 12th anniversary of the

latest such address will be used. grant for the third maintenance fee.

(b) An assignment of a patent appli(f) If the last day for paying a main

cation or patent does not result in a tenance fee without surcharge set forth

change of the “correspondence adin paragraph (d) of this section, or the

dress" or "fee address" for maintelast day for paying a maintenance fee

nance fee purposes. with surcharge set forth in paragraph (e) of this section, falls on a Saturday, [49 FR 34725, Aug. 31, 1984) Sunday, or a federal holiday within the District of Columbia, the maintenance 8 1.366 Submission of maintenance fee and any necessary surcharge may

fees. be paid under paragraph (d) or para (a) The patentee may pay maintegraph (e) respectively on the next suc nance fees and any necessary surceeding day which is not a Saturday,

charges, or any person or organization Sunday, or federal holiday.

may pay maintenance fees and any (g) Unless the maintenance fee and

necessary surcharges on behalf of a any applicable surcharge is paid within patentee. Authorization by the patthe time periods set forth in para entee need not be filed in the Patent graphs (d), (e) or (f) of this section, the and Trademark Office to pay maintepatent will expire as of the end of the

nance fees and any necessary surgrace period set forth in paragraph (e) charges on behalf of the patentee. of this section. A patent which expires (b) A maintenance fee and any inecfor the failure to pay the maintenance

essary surcharge submitted for a patfee will expire at the end of the same

ent must be submitted in the amount date (anniversary date) the patent was due on the date the maintenance fee granted in the 4th, 8th, or 12th year

and any necessary surcharge are paid after grant.

and may be paid in the manner set (h) The periods specified in $81.362 (d)

forth in $1.23 or by an authorization to and (e) with respect to a reissue appli

charge a deposit account established cation, including a continuing reissue

pursuant to $1.25. Payment of a mainapplication thereof, are counted from

tenance fee and any necessary surthe date of grant of the original non-re

charge or the authorization to charge & issue application on which the reissued

deposit account must be submitted patent is based.

within the periods set forth in $1.362(d), (49 FR 34724, Aug. 31, 1984, as amended at 56 (e) or (f). Any payment or authorizaFR 65154, Dec. 13, 1991; 58 FR 54511, Oct. 22,

tion of maintenance fees and sur1993)

charges filed at any other time will not

more than one patent are submitted together, they should be submitted on as few sheets as possible with the patent numbers listed in increasing patent number order. If the payment submit ted is insufficient to cover the maintenance fees and surcharges for all the listed patents, the payment will be applied in the order the patents are listed, beginning at the top of the listing.

(1) Notification of any change in status resulting in loss of entitlement to small entity status must be filled in a patent prior to paying, or at the time of paying, the earliest maintenance fee due after the date on which status as a small entity is no longer appropriate. See 81.28(b).

(8) Maintenance fees and surcharges relating thereto will not be refunded except in accordance with $$ 1.26 and 1.28(a). [49 FR 34725, Aug. 31, 1984, as amended at 58 FR 54503, Oct. 22, 1993]

be accepted and will not serve as a payment of the maintenance fee expect insofar as a delayed payment of the maintenance fee is accepted by the Commissioner in an expired patent pursuant to a petition filed under $1.378. Any authorization to charge a deposit account must authorize the immediate charging of the maintenance fee and any necessary surcharge to the deposit account. Payment of less than the required amount, payment in a manner other than that set forth in $1.23, or the filing of an authorization to charge a deposit account having insufficient funds will not constitute payment of a maintenance fee or surcharge on a patent. The certificate procedures of either $1.8 or $1.10 may be utilized in paying maintenance fees and any necessary surcharges.

(c) In submitting maintenance fees and any necessary surcharges, identification of the patents for which maintenance fees are being paid must include the following:

(1) The patent number, and

(2) The serial number of the United States application for the patent on which the maintenance fee is being paid.

(d) Payments of maintenance fees and any surcharges should identify the fee being paid for each patent as to whether it is the 342, 747 or 1142 year fee, whether small entity status is being changed or claimed, the amount of the maintenance fee and any surcharge being paid, any assigned payor number, the patent issue ate an the United States application filing date. If the maintenance fee and any necessary surcharge is being paid on a reissue patent, the payment must identify the reissue patent by reissue patent number and reissue application serial number as required by paragraph (c) of this section and should also include the original patent number, the original patent issue date and the original United States application filing date.

(e) Maintenance fee payments and surcharge payments relating thereto must be submitted separate from any other payments for fees or charges, whether submitted in the manner set forth in $1.23 or by an authorization to charge a deposit account. If maintenance fee and surcharge payments for

1.377 Review of decision refusing to

accept and record payment of a maintenance fee filed prior to expi

ration of patent. (a) Any patentee who is dissatisfied with the refusal of the Patent and Trademark Office to accept and record a maintenance fee which was filled prior to the expiration of the patent may petition the Commissioner to accept and record the maintenance fee.

(b) Any petition under this section must be filed within 2 months of the action complained of, or within such other time as may be set in the action complained of, and must be accompanied by the fee set forth in $1.17(h). The petition may include a request that the petition fee be refunded if the refusal to accept and record the maintenance fee is determined to result from an error by the Patent and Trademark Office.

(c) Any petition filed under this section must comply with the requirements of paragraph (b) of $ 1.181 and must be signed by an attorney or agent registered to practice before the Patent and Trademark Office, or by the patentee, the assignee, or other party in interest. Such petition must be in the form of a verified statement if made by

a person not registered to practice be- (3) A statement that the delay in fore the Patent and Trademark Office. payment of the maintenance fee was

unintentional. [49 FR 34725, Aug. 31, 1984)

(d) Any petition under this section $1.378 Acceptance of delayed payment

must be signed by an attorney or agent of maintenance fee in expired pat registered to practice before the Patent ent to reinstate patent.

and Tradema Office, or by the pat

entee, the assignee, or other party in (a) The Commissioner may accept

interest. Such petition must be in the the payment of any maintenance fee

form of a verified statement if made by due on a patent after expiration of the

a person not registered to practice bepatent if, upon petition, the delay in

fore the Patent and Trademark Office. payment of the maintenance fee is

(e) Reconsideration of a decision reshown to the satisfaction of the Com- fusing to accept a maintenance fee missioner to have been unavoidable

upon petition filed pursuant to para(paragraph (b) of this section) or unin- graph (a) of this section may be ob tentional (paragraph (c) of this section) tained by filing a petition for reconsidand if the surcharge required by $1.20(1) eration within two months of, or such is paid as a condition of accepting pay- other time as set in, the decision refusment of the maintenance fee. If the ing to accept the delayed payment of Commissioner accepts payment of the the maintenance fee. Any such petition maintenance fee upon petition, the pat- for reconsideration must be accoment shall be considered as not having panied by the petition fee set forth in expired, but will be subject to the con- $1.17(h). After decision on the petition ditions set forth in 35 U.S.C. 41(c)(2). for reconsideration, no further recon(b) Any petition to accept an un

sideration or review of the matter will avoidably delayed payment of a main

be undertaken by the Commissioner. If tenance fee filed under paragraph (a) of

the delayed payment of the maintethis section must include:

nance fee is not accepted, the mainte (1) The required maintenance fee set

nance fee and the surcharge set forth forth in $1.20 (e) through (g);

in $1.20(1) will be refunded following

the decision on the petition for recon(2) The surcharge set forth in 81.20(1)(1); and

sideration, or after the expiration of

the time for filing such a petition for (3) A showing that the delay was unavoidable since reasonable care

reconsideration, if none is filed. Any was

petition fee under this section will not taken to ensure that the maintenance

be refunded unless the refusal to accept fee would be paid timely and that the

and record the maintenance fee is depetition was filed promptly after the

termined to result from an error by the patentee was notified of, or otherwise

Patent and Trademark Office. became aware of, the expiration of the patent. The showing must enumerate

[49 FR 34726, Aug. 31, 1984, as amended at 50 the steps taken to ensure timely pay

FR 9383, Mar. 7, 1985; 68 FR 44282, Aug. 20, ment of the maintenance fee, the date

1993) and the manner in which patentee became aware of the expiration of the

Subpart - International patent, and the steps taken to file the

Processing Provisions petition promptly.

AUTHORITY: Pub. L. 94-131, 89 Stat. 686; (c) Any petition to accept an unin

Pub. L. 99 616, 35 U.S.C. 351 through 876. tentionally delayed payment of maintenance fee filed under paragraph

SOURCE: 43 FR 20466, May 11, 1978, unless (a) of this section must be filed within

otherwise noted. twenty-four months after the six

GENERAL INFORMATION month grace period provided in 81.362(e) and must include:

8 1.401 Definitions of terms under the (1) The required maintenance fee set

Patent Cooperation Treaty. forth in $1.20 (e) through (g);

(a) The abbreviation PCT and the (2) The surcharge set forth in term Treaty mean the Patent Coopera$1.20(i)(2); and

tion Treaty.

a

(b) International Bureau means the World Intellectual Property Organization located in Geneva, Switzerland.

(c) Administrative Instructions means that body of instructions for operating under the Patent Cooperation Treaty referred to in PCT Rule 89.

(d) Request, when capitalized, means that element of the international application described in PCT Rules 3 and 4.

(e) International application, as used in this subchapter is defined in $1.9(b).

(f) Priority date for the purpose of computing time limits under the Patent Cooperation Treaty is defined in PCT Art. 2 (xi). Note also $1.465.

(g) Demand, when capitalized, means that document filed with the International Preliminary Examining Authority which requests

an international preliminary examination.

(h) Annexes means amendments made to the claims, description or the drawings before the International Preliminary Examining Authority.

(i) Other terms and expressions in this subpart C not defined in this section are to be taken in the sense indicated in PCT Art. 2 and 35 U.S.C. 351.

international applications (PCT Rule 14, 15, 16);

(4) Transmitting the record and search copies to the International Bureau and International Searching Authority, respectively (PCT Rules 22 and 23); and

(5) Determining compliance with applicable requirements of part 5 of this chapter.

(6) Reviewing and, where the United States Receiving Office is not the competent Receiving Office under $1.421(a) and PCT Rule 19.1 or 19.2, transmitting the international application to the International Bureau for processing in its capacity as a Receiving Office unless prescriptions concerning national security prevent the application from being so transmitted (PCT Rule 19.4). (43 FR 20466, May 11, 1978, as amended at 60 FR 21439, May 2, 1995)

(43 FR 20466, May 11, 1978, as amended at 52 FR 20047, May 28, 1987)

8 1.413 The United States International

Searching Authority. (a) Pursuant to appointment by the Assembly, the United States Patent and Trademark Office will act as an International Searching Authority for international applications filed in the United States Receiving Office and in other Receiving Offices as may be agreed upon by the Commissioner, in accordance with agreement between the Patent and Trademark Office and the International Bureau (PCT Art. 16(3)(b)).

(b) The Patent and Trademark Office, when acting as an International Searching Authority, will be identified by the full title “United States International Searching Authority” or by the abbreviation “ISAJUS.”

(c) The major functions of the International Searching Authority include:

(1) Approving or establishing the title and abstract;

(2) Considering the matter of unity of invention;

(3) Conducting international and international-type searches and preparing international and internationaltype search reports (PCT Art. 15, 17 and 18, and PCT Rules 25, 33 to 45 and 47); and

(4) Transmitting the international search report to the applicant and the International Bureau.

81.412 The United States Receiving

Office. (a) The United States Patent and Trademark Office is Receiving Office only for applicants who are residents or nationals of the United States of America.

(b) The Patent and Trademark Office, when acting as a Receiving Office, will be identified by the full title “United States Receiving Office” or by the abbreviation "ROJUS.”

(c) The major functions of the Receiving Office include:

(1) According of international filing dates to international applications meeting the requirements of PCT Art. 11(1), and PCT Rule 20;

(2) Assuring that international applications meet the standards for format and content of PCT Art. 14(1), PCT Rule 9, 26, 29.1, 37, 38, 91, and portions of PCT Rules 3 through 11;

(3) Collecting and, when required, transmitting fees due for processing

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