§ 1.378 Acceptance of delayed payment of maintenance fee in expired patent to reinstate patent. (a) The Commissioner may accept the payment of any maintenance fee due on a patent after expiration of the patent if, upon petition, the delay in payment of the maintenance fee is shown to the satisfaction of the Commissioner to have been unavoidable and if the surcharge required by § 1.20(m) is paid as a condition of accepting payment of the maintenance fee. If the Commissioner accepts payment of the maintenance fee upon petition, the patent shall be considered as not having expired, but will be subject to the conditions set forth in 35 U.S.C. 41(c)(2). (b) Any petition to accept the delayed payment of a maintenance fee filed under paragraph (a) of this section within six months of the expiration of the patent must include: (1) The required maintenance fee set forth in § 1.20 (e) through (j), (2) The surcharge set forth in § 1.20(m); and (3) A showing that the delay was unavoidable since reasonable care was taken to ensure that the maintenance fee would be paid timely. The showing must enumerate the steps taken to ensure timely payment of the maintenance fee. (c) Any petition to accept the delayed payment of a maintenance fee filed under paragraph (a) of this section more than six months after the expiration of the patent must include: (1) The required maintenance fee set forth in § 1.20 (e) through (j), (2) The surcharge set forth in § 1.20(m); and (3) A showing that the delay was unavoidable since reasonable care was taken to ensure that the maintenance fee would be paid timely and the failure to timely pay the maintenance fee was due entirely to circumstances outside of the control of the patentee. The showing must enumerate the steps taken to ensure timely payment of the maintenance fee and the circumstances which were outside of the control of the patentee and those acting on behalf of the patentee in paying the maintenance fee. The showing must be sufficient in scope and content to meet the heavy burden of proof required to show that a delay in payment of the maintenance fee of more than six months after expiration of the patent was unavoidable. (d) Any petition under this section 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 before the Patent and Trademark Office. (e) Reconsideration of a decision refusing to accept a maintenance fee upon petition filed pursuant to paragraph (a) of this section may be obtained by filing a petition for reconsideration within two months of, or such other time as set in, the decision refusing to accept the delayed payment of the maintenance fee. Any such petition for reconsideration must be accompanied by the petition fee set forth in § 1.17(h). After decision on the petition for reconsideration, no further reconsideration or review of the matter will be undertaken by the Commissioner. If the delayed payment of the maintenance fee is not accepted, the maintenance fee and the surcharge set forth in § 1.20(m) will be refunded following the decision on the petition for reconsideration, or after the expiration of the time for filing such a petition for reconsideration, if none is filed. The fee set forth in § 1.17(h) for filing the petition for reconsideration will not be refunded unless the refusal to accept and record the maintenance fee is determined to result from an error by the Patent and Trademark Office. [49 FR 34726, Aug. 31, 1984, as amended at 50 FR 9383, Mar. 7, 1985; 53 FR 47810, Nov. 28, 1988] Subpart C-International Processing Provisions AUTHORITY: Pub. L. 94-131, 89 Stat. 685; Pub. L. 99-616, 35 U.S.C. 351 through 376. SOURCE: 43 FR 20466, May 11, 1978, unless otherwise noted. count. 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 of mailing 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 31⁄2, 7% or 111⁄2 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 date and 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 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 submitted 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. (f) Notification of any change in status resulting in loss of entitlement to small entity status must be filed 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 § 1.28(b). (g) 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] § 1.377 Review of decision refusing to accept and record payment of a maintenance fee filed prior to expiration 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 filed 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 before the Patent and Trademark Office. [49 FR 34725, Aug. 31, 1984] § 1.378 Acceptance of delayed payment of maintenance fee in expired patent to reinstate patent. (a) The Commissioner may accept the payment of any maintenance fee due on a patent after expiration of the patent if, upon petition, the delay in payment of the maintenance fee is shown to the satisfaction of the Commissioner to have been unavoidable and if the surcharge required by § 1.20(m) is paid as a condition of accepting payment of the maintenance fee. If the Commissioner accepts payment of the maintenance fee upon petition, the patent shall be considered as not having expired, but will be subject to the conditions set forth in 35 U.S.C. 41(c)(2). (b) Any petition to accept the delayed payment of a maintenance fee filed under paragraph (a) of this section within six months of the expiration of the patent must include: (1) The required maintenance fee set forth in § 1.20 (e) through (j), (2) The surcharge set forth in §1.20(m); and (3) A showing that the delay was unavoidable since reasonable care was taken to ensure that the maintenance fee would be paid timely. The showing must enumerate the steps taken to ensure timely payment of the maintenance fee. (c) Any petition to accept the delayed payment of a maintenance fee filed under paragraph (a) of this section more than six months after the expiration of the patent must include: (1) The required maintenance fee set forth in § 1.20 (e) through (j), (2) The surcharge set forth in § 1.20(m); and (3) A showing that the delay was unavoidable since reasonable care was taken to ensure that the maintenance fee would be paid timely and the failure to timely pay the maintenance fee was due entirely to circumstances outside of the control of the patentee. The showing must enumerate the steps taken to ensure timely payment of the maintenance fee and the circumstances which were outside of the control of the patentee and those acting on behalf of the patentee in paying the maintenance fee. The showing must be sufficient in scope and content to meet the heavy burden of proof required to show that a delay in payment of the maintenance fee of more than six months after expiration of the patent was unavoidable. (d) Any petition under this section 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 before the Patent and Trademark Office. (e) Reconsideration of a decision refusing to accept a maintenance fee upon petition filed pursuant to paragraph (a) of this section may be obtained by filing a petition for reconsideration within two months of, or such other time as set in, the decision refusing to accept the delayed payment of the maintenance fee. Any such petition for reconsideration must be accompanied by the petition fee set forth in § 1.17(h). After decision on the petition for reconsideration, no further reconsideration or review of the matter will be undertaken by the Commissioner. If the delayed payment of the maintenance fee is not accepted, the maintenance fee and the surcharge set forth in § 1.20(m) will be refunded following the decision on the petition for reconsideration, or after the expiration of the time for filing such a petition for reconsideration, if none is filed. The fee set forth in § 1.17(h) for filing the petition for reconsideration will not be refunded unless the refusal to accept and record the maintenance fee is determined to result from an error by the Patent and Trademark Office. [49 FR 34726, Aug. 31, 1984, as amended at 50 FR 9383, Mar. 7, 1985; 53 FR 47810, Nov. 28, 1988] Subpart C-International Processing Provisions AUTHORITY: Pub. L. 94-131, 89 Stat. 685; Pub. L. 99-616, 35 U.S.C. 351 through 376. SOURCE: 43 FR 20466, May 11, 1978, unless otherwise noted. GENERAL INFORMATION § 1.401 Definitions of terms under the Patent Cooperation Treaty. (a) The abbreviation "PCT" and the term "Treaty" mean the Patent Cooperation Treaty. (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. [43 FR 20466, May 11, 1978, as amended at 52 FR 20047, May 28, 1987] 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 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. § 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 "ISA/US.” (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 international-type 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. § 1.414 The United States Patent and Trademark Office as a Designated Office or Elected Office. (a) The United States Patent and Trademark Office will act as a Designated Office or Elected Office for international applications in which the United States of America has been designated or elected as a State in which patent protection is desired. (b) The United States Patent and Trademark Office, when acting as a Designated Office or Elected Office during international processing will be identified by the full title "United States Designated Office" or by the abbreviation "DO/US" or by the full title "United States Elected Office" or by the abbreviation "EO/US”. (c) The major functions of the United States Designated Office or Elected Office in respect to international applications in which the United States of America has been designated or elected, include: (1) Receiving various notifications throughout the international stage and (2) Accepting for national stage examination international applications which satisfy the requirements of 35 U.S.C. 371. [52 FR 20047, May 28, 1987] $1.415 The International Bureau. (a) The International Bureau is the World Intellectual Property Organization located at Geneva, Switzerland. It is the international intergovernmental organization which acts as the coordinating body under the Treaty and the Regulations (PCT Art. 2 (xix) and 35 U.S.C. 351 (h)). (b) The major functions of the International Bureau include: (1) Publishing of international applications and the International Gazette; (2) Transmitting copies of international applications to Designated Offices; (3) Storing and maintaining record copies; and (4) Transmitting information to authorities pertinent to the processing of specific international applications. § 1.416 The United States International Preliminary Examining Authority. (a) Pursuant to appointment by the Assembly, the United States Patent and Trademark Office will act as an International Preliminary Examining 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. (b) The United States Patent and Trademark Office, when acting as an International Preliminary Examining Authority, will be identified by the full title "United States International Preliminary Examining Authority" or by the abbreviation "IPEA/US." (c) The major functions of the International Preliminary Examining Authority include: (1) Receiving and checking for defects in the Demand; (2) Collecting the handling fee for the International Bureau and the preliminary examination fee for the United States International Preliminary Examining Authority; (3) Informing applicant of receipt of the Demand; (4) Considering the matter of unity of invention; (5) Providing an international preliminary examination report which is a non-binding opinion on the questions whether the claimed invention appears to be novel, to involve an inventive step (to be non-obvious), and to be industrially applicable; and (6) Transmitting the international preliminary examination report to applicant and the International Bureau. [52 FR 20047, May 28, 1987] WHO MAY FILE AN INTERNATIONAL |