1.108 Inspection of claims of opposing 1.147 Reconsideration of cases by Com Hearings 1.114 Failure to file preliminary state- 1.151 Hour of hearings. ment. 1.115 Failure to file statement. 1.152 Setting of time of hearings. Motions 1.116 Presumption as to order of inven- 1.153 Notice and proof of service. tion. 1.117 Statement not evidence. mony. 1.122 Motion to dissolve; motion to shift burden of proof. 1.123 Motions to effect stay of proceedings. 1.124 Appeals from adverse decision. 1.125 Determination. 1.159 Evidence on hearing. 1.161 Inspection and printing. 1.126 Statutory bar suggested; how de 1.163 Briefs; size and time of filing. termined. 1.127 Second interference. 1.132 Claims of defeated party. Appeals to the board of appeals 1.133 Appeal to board of appeals. 1.135 Examiner's statement. 1.137 Oral hearing before board of ap peals. 1.138 Application remanded to primary examiner. 1.139 Decision of board of appeals. 1.140 Rehearings. 1.141 Jurisdiction. 1.167 Date of patent. 1.168 Title of invention; grant; term. 1.170 Correction of errors in letters forfeited, revived, 1.174 Forfeited or withheld application. 1.175 New application after nonpayment of final fee. 1.176 Renewal; old application papers may be used. 1.142 Petition to Commissioner with- 1.177 Not cited as references. out fee. Appeals to the board of appeals 1.143 Appeals to board of appeals. Sec. Assignments 1.183 Assignability of patents. 1.184 Assignees and grantees. 1.185 Recording; acknowledgment. 1.186 Recorded in English language. 1.187 Conditional assignments. 1.188 Issue to assignee. Sec. 1.193 Copies certified by office. 1.195 Money paid by mistake refunded. 1.196 Official Gazette. Library regulations 1.189 Receipt, recording, and return of 1.197 Removal of books, translations, assignments. Office fees 1.190 Fees payable in advance. 1.191 Schedule. 1.192 Orders for copies. and copies. Amendments of the rules 1.198 Publication. 1.199 Questions not specifically provided for. CROSS REFERENCES Prints and labels: See Part 9. Trade-marks: See Part 5. Inventions submitted for examination of United States Government from foreign lands: See Foreign Relations, 22 CFR 91.443. CORRESPONDENCE Section 1.1 Business to be transacted in writing. All business with the office should be transacted in writing. Unless by the consent of all parties, the action of the office will be based exclusively on the written record. No attention will be paid to any alleged oral promise, stipulation, or understanding in relation to which there is a disagreement or doubt.*t *88 1.1 to 1.199, inclusive, issued under the authority contained in R.S. 483; 35 U.S.C. 6. Additional statutory provisions applicable to particular sections are noted in parentheses at the end of such sections. tIn 88 1.1 to 1.199, inclusive, the numbers to the right of the decimal point correspond with the respective rule numbers in Rules of Practice in the United States Patent Office, revised, approved by the Secretary of Commerce, Aug. 3, 1936, issued by Commissioner of Patents, Oct. 1, 1936. 1.2 Correspondence to be in name of Commissioner. All office letters must be sent in the name of the "Commissioner of Patents." All letters and other communications intended for the office must be addressed to him; if addressed to any of the other officers, they will ordinarily be returned.*† 1.3 All charges to be prepaid. Express charges, freight, postage, and all other charges on matter sent to the Patent Office must be prepaid in full; otherwise it will not be received.*† 1.4 Personal attendance. The personal attendance of applicants at the Patent Office is unnecessary. Their business can be transacted by correspondence.*† 1.5 Correspondence with assignee. The assignee of the entire interest of an invention is entitled to hold correspondence with the office to the exclusion of the inventor. (See § 1.20.)*+ 1.6 Correspondence with inventor and assignee. When there has been an assignment of an undivided part of an invention, amendments and other actions requiring the signature of the inventor Page 4 *For statutory and source citations, see note to § 1.1. must also receive the written assent of the assignee; but official letters will only be sent to the post-office address of the inventor, unless he shall otherwise direct.*† 1.7 Correspondence with attorney. When an attorney shall have filed his power of attorney, duly executed, the correspondence will be held with him. A double correspondence with the inventor and an assignee, or with a principal and his attorney, or with two attorneys, cannot generally be allowed.*† 1.8 Separate letters. A separate letter should in every case be written in relation to each distinct subject of inquiry or application. Assignments for record, final fees, and orders for copies or abstracts must be sent to the office in separate letters. Papers sent in violation of this section will be returned.*† 1.9 Letters relating to applications. When a letter concerns an application, it should state the name of the applicant, the title of the invention, the serial number of the application (see § 1.31), and the date of filing the same (see § 1.32).*t 1.10 Letters relating to patents. When the letter concerns a patent, it should state the name of the patentee, the title of the invention, and the number and date of the patent.*† 1.11 Public use proceedings. No attention will be paid to unverified ex parte statements or protests of persons concerning pending applications to which they are not parties, unless information of the pendency of these applications shall have been voluntarily communicated by the applicants. When a petition for the institution of public-use proceedings, supported by affidavits, is found, on reference to the primary examiner, to make a prima facie showing that the invention involved in an interference or disclosed in an application believed to be on file had been in public use or on sale 2 years before the filing of the application, or before the date alleged by an interfering party in his preliminary statement, a hearing may be had before the Commissioner to determine whether a public-use proceeding should be instituted. If instituted, times may be set for taking testimony. The papers should be filed in duplicate, or served upon the applicant or his attorney of record and petitioner should offer to bear any expense to which the office may be put.** 1.12 Mail; filing of papers after office hours. Mail placed in the Patent Office pouch in the post office at Washington, D. C., up to 4.30 p. m. on weekdays, excepting holidays, and 1 p. m. on half holidays, is entered as received in the Patent Office on the day it reaches the post office. Special-delivery letters and other papers may be deposited in a box provided at the watchman's desk at the E Street entrance of the Patent Office up to midnight on weekdays, including holidays, and all papers deposited therein are entered as received in the Patent Office on the day of deposit. Letters received at the office will be answered, and orders for printed copies filled, without unnecessary delay. Telegrams, if not re **For statutory and source citations, see note to § 1.1. Page 5 ceived before 3 o'clock p. m., cannot ordinarily be answered until the following day."t 1.13 Interviews with examiners. Interviews with examiners concerning applications and other matters pending before the office must be had in the examiners' rooms at such times, within office hours, as the respective examiners may designate; in the absence of the primary examiners, with the assistant in charge. Interviews will not be permitted at any other time or place without the written authority of the Commissioner. Interviews for the discussion of pending applications will not be had prior to the first official action thereon.*t INFORMATION TO CORRESPONDENTS 1.14 Subjects on which information cannot be given. The office cannot respond to inquiries as to the novelty of an alleged invention in advance of the filing of an application for a patent, nor to inquiries propounded with a view to ascertaining whether any alleged improvements have been patented, and, if so, to whom; nor can it act as an expounder of the patent law, nor as counsellor for individuals, except as to questions arising within the office. Of the propriety of making an application for a patent, the inventor must judge for himself. The office is open to him, and its records pertaining to all patents granted may be inspected either by himself or by any attorney or expert he may call to his aid, and its reports are widely distributed. (See § 1.196.) Further than this the office can render him no assistance until his case comes regularly before it in the manner prescribed by law. A copy of the rules in this part, or circular of information, with a section marked, sent to the individual making an inquiry of the character referred to, is intended as a respectful answer by the office. Examiners' digests are not open to public inspection.*† 1.15 Pending applications kept in secrecy. Pending applications are preserved in secrecy. No information will be given, without authority, respecting the filing by any particular person of an application for a patent or for the reissue of a patent, the pendency of any particular case before the office, or the subject matter of any particular application, unless it shall be necessary to the proper conduct of business before the office, as provided by §§ 1.91, 1.97, 1.103, 1.108.*+ 1.16 Records and copies in patented cases. After a patent has issued, the model, specification, drawings, and all documents relating to the case are subject to general inspection, and copies, except of the model, will be furnished at the rates specified in § 1.191.*+ ATTORNEYS 1.17 Register of attorneys. An applicant or an assignee of the entire interest may prosecute his own case, but he is advised, unless familiar with such matters, to employ a competent patent attorney, as the value of patents depends largely upon the skillful preparation Page 6 **For statutory and source citations, see note to § 1.1. of the specification and claims. The office cannot aid in the selection of an attorney. A register of attorneys will be kept in this office, on which will be entered the names of all persons entitled to represent applicants before the Patent Office in the presentation and prosecution of applications for patent. The names of persons in the following classes will, upon their written request, be entered upon this register: (a) Any attorney at law who is in good standing in any court of record in the United States or any of the States or Territories thereof and who shall furnish a certificate of the clerk of such United States, State, or Territorial court, duly authenticated under the seal of the court, that he is an attorney in good standing, and who shall establish that he is possessed of the legal and scientific qualifications enumerated in paragraph (b). (b) Any person not an attorney at law who is a citizen or resident of the United States and who shall establish to the satisfaction of the Commissioner that he is of good moral character and of good repute and possessed of the necessary legal and scientific qualifications to enable him to render applicants for patents valuable service and is otherwise competent to advise and assist them in the presentation and prosecution of their applications before the Patent Office. (c) In order to determine whether a person seeking to have his name placed upon the aforesaid register has the qualifications specified in paragraph (b), an examination will be held from time to time. No person will be permitted to take the examination unless he submits satisfactory proof as to his good moral character and as to having had a sufficient basic training in scientific and technical matters: Provided, That the taking of the examination may be waived in the case of any person who has served for 3 years in the examining corps of the Patent Office. (d) Any foreign patent attorney not a resident of the United States, who shall file proof to the satisfaction of the Commissioner that he is registered and in good standing before the patent office of the country of which he is a citizen or subject, and is possessed of the qualifications stated in paragraph (b): Provided, That the patent office of the country of which he is a citizen or subject allows substantially reciprocal privileges to those admitted to practice before the United States Patent Office. (e) Any firm will be registered which shall show that the individual members composing the firm are each and all registered under the provisions of paragraphs (a), (b), (c), (d). (f) Any person or firm not registered and not entitled to be recognized under this section as an attorney or agent to represent applicants generally may, upon a showing of circumstances which render it necessary or justifiable, be recognized by the Commissioner to prosecute as attorney or agent certain specified application or applications, but this limited recognition shall not extend further than the application or applications named. (g) No person not registered or entitled to recognition as above provided will be permitted to prosecute applications before the Patent Office. Page 7 |