The specification of this application contains a computer program listing consisting of more than three hundred (300) lines. In accordance with 37 CFR 1.96(c), a computer program listing of more than three hundred lines must be submitted as an appendix in text format. The "Computer Program Listing Appendix" may be submitted as a text file via the Office Electronic Filing System or on a read-only optical disc conforming to the standards set forth in 37 CFR 1.96(c)(1). The "Computer Program Listing Appendix" must be appropriately referenced in the specification (see 37 CFR 1.77(b)(5) ). Accordingly, applicant is required to cancel the current computer program listing, file a "Computer Program Listing Appendix" as a text file via the Office Electronic Filing System or on a read-only optical disc in compliance with 37 CFR 1.96(c), and insert an appropriate reference to the newly added "Computer Program Listing Appendix" at the beginning of the specification.
1. This form paragraph must be used whenever a computer program listing consisting of more than three hundred lines is included as part of the descriptive portion of the specification if the computer program listing was filed on or after September 8, 2000. See MPEP § 608.05(a).
2. In bracket 1, insert the range of page numbers of the specification which include the computer program listing.
This application contains a computer program listing of over sixty (60) lines and less than three hundred and one (301) lines within the written specification. In accordance with 37 CFR 1.96(b), a computer program listing contained on over sixty (60) lines and less than three hundred-one (301) lines must, if submitted as part of the specification, be positioned at the end of the specification and before the claims. Accordingly, applicant is required to cancel the computer program listing and either incorporate such listing in a text file submitted via the Office Electronic Filing System or on read-only optical disc in compliance with 37 CFR 1.96, or insert the computer program listing after the detailed description of the invention but before the claims.
This form paragraph must be used whenever a computer program listing consisting of a paper printout of more than 60 lines and no more than three hundred lines is included as part of the descriptive portion of the specification and the computer program listing was filed on or after September 8, 2000. See MPEP § 608.05(a).
37 CFR 1.96(c) lists several requirements of a "Computer Program Listing Appendix". Specifically, a "Computer Program Listing Appendix" must be compatible with PC or Mac® computers and with MS-DOS®, MS-Windows®, Mac OS®, or Unix®/Linux® operating systems. Also, a "Computer Program Listing Appendix" may only have ASCII CRLF or LF line terminators, and the data must not be dependent on control characters or codes that are not defined in the ASCII character set. See 37 CFR 1.96(c)(1) ). Also, a "Computer Program Listing Appendix" must have a file name with a ".txt" extension. See 37 CFR 1.96(c)(2) (provides the requirements for the file name).
There is a 25 MB size limit for "Computer Program Listing Appendix" files submitted via the USPTO patent electronic filing system with file compression not being permitted. See 37 CFR 1.96(c)(3). It is noted that it may be possible to break up a "Computer Program Listing Appendix" file that is larger than 25 MB into multiple files that are 25 MB or less in size and submit those smaller files via the USPTO patent electronic filing system, as per the Legal Framework for Patent Electronic System (www.uspto.gov ). See also MPEP § 608.05(I)(C).
A "Computer Program Listing Appendix" submitted on a read-only optical disc in compliance with 37 CFR 1.52(e) must be submitted as a separate read-only optical disc for each applicable application, and multiple computer program listings for a single application may be placed on a single read-only optical disc. Multiple read-only optical discs, containing one or more computer program listings, may be submitted for a single application. Any computer program listing may be compressed using WinZip®, 7-Zip, or Unix®/Linux® Zip, and the compressed file must not be self-extracting. However, a computer program listing which has a nested file structure is required to be compressed. If after compression, a compressed ASCII plain text file still does not fit on a single read-only optical disc, the compressed file may be split into multiple file parts in accordance with the target read-only optical disc size and labeled in compliance with 37 CFR 1.52(e)(5)(vi). See 37 CFR 1.96(c)(4).
Read-only optical discs containing a "Computer Program Listing Appendix" must be submitted in duplicate and labeled as "Copy 1" and "Copy 2" respectively. The transmittal letter that accompanies the read-only optical discs must include a statement that the two read-only optical discs are identical. In the event that the two read-only optical disc copies are not identical, the Office will use the read-only optical disc labeled "Copy 1" for further processing. See 37 CFR 1.96(c)(7). Two discs would be considered not identical when, e.g., the files contained on those discs are not the same. Duplicate copies for a "Computer Program Listing Appendix" are required to be submitted since the OPAP keeps a first copy for record retention purposes and a second copy in an artifact folder for use by the examiner during the patent examination process. Any amendment to the information on a read-only optical disc must be by way of a replacement read-only optical disc in compliance with 37 CFR 1.96(c)(5), as discussed immediately below.
In order to amend a "Computer Program Listing Appendix", a replacement ASCII plain text file, in accordance with 37 CFR 1.96(c), must be submitted via the USPTO patent electronic filing system or on a read-only optical disc, in compliance with 37 CFR 1.52(e). Any replacement ASCII plain text file submitted on read-only optical discs must be submitted in duplicate and must be labeled as "COPY 1 REPLACEMENT MM/DD/YYYY" (with the month, day, and year of creation indicated) and "COPY 2 REPLACEMENT MM/DD/YYYY". When the information is filed on a read-only optical disc initially, amendments cannot be made to the information using the USPTO patent electronic filing system, but instead must be made using a replacement read-only optical disc. See 37 CFR 1.52(e)(7). Also, a request must be made that the material in the replacement ASCII plain text file be incorporated by reference in a separate paragraph of the specification (replacing any prior such paragraph, as applicable) identifying the name of the file, the date of creation, and the size of the file in bytes. See 37 CFR 1.77(b)(5). A statement must be provided that identifies the location of all deletions, replacements, or additions to the ASCII plain text file so that the changes made to the information contained in the submission can be more easily and accurately identified. Another statement that the replacement ASCII plain text file contains no new matter must also be provided. See 37 CFR 1.96(c)(5). The Office may also require that a replacement ASCII plain text file be submitted if, for example, the information on a read-only optical disc is corrupted.
A "Computer Program Listing Appendix" filed as an ASCII plain text file on the date that the application was accorded a filing date is to be treated as part of the originally filed disclosure even if the required "incorporation by reference" statement (see 37 CFR 1.77(b)(5) ) is omitted. Similarly, if a preliminary amendment accompanies the application when it is filed in the Office and the preliminary amendment includes a "Computer Program Listing Appendix" as an ASCII plain text file, the "Computer Program Listing Appendix" will be treated as part of the original disclosure. The "Computer Program Listing Appendix" is considered part of the original disclosure by virtue of its inclusion with the application on the date the application is accorded a filing date. The incorporation by reference statement of the material in the ASCII plain text file is required to be part of the specification so it is clear to the Office, the printer, and the public that the application as originally filed includes the "Computer Program Listing Appendix". The examiner should require applicant(s) to insert this statement if it is omitted. See 37 CFR 1.96(c)(6). Also, if the application would otherwise be in condition for allowance, the examiner may insert the statement by examiner’s amendment with a notice of allowance after receiving authorization from the applicant. See MPEP § 1302.04 and 37 CFR 1.121(g).
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· (b) Chemical and mathematical formulas and tables must be presented in compliance with § 1.52(a) and (b), except that chemical and mathematical formulas or tables may be placed in a landscape orientation if they cannot be presented satisfactorily in a portrait orientation. Typewritten characters used in such formulas and tables must be chosen from a block (nonscript) type font or lettering style having capital letters that should be at least 0.422 cm (0.166 inches) high (e.g., preferably Arial, Times Roman, or Courier, with a font size of 12 points), but may be no smaller than 0.21 cm (0.08 inches) high (e.g., a font size of 6 points). A space at least 0.64 cm (0.25 inches) high should be provided between complex formulas and tables and the text. Chemical and mathematical formulas must be configured to maintain the proper positioning of their characters when displayed in order to preserve their intended meaning. Tables should have the lines and columns of data closely spaced to conserve space, consistent with a high degree of legibility.
· (c) The following "Large Tables" may be submitted in electronic form in ASCII plain text via the USPTO patent electronic filing system or on a read-only optical disc, in compliance with § 1.52(e), excluding an international application during the international stage:
· (1) Any individual table that is more than 50 pages in length; or
· (2) Multiple tables, if the total number of pages of all the tables in an application exceeds 100 pages in length, where a table page is a page printed on paper, in conformance with paragraph (b) of this section.
· (d) "Large Tables" submitted in electronic form in ASCII plain text must conform to the following requirements:
· (1) Must maintain the spatial relationships (e.g., alignment of columns and rows) of the table elements when displayed to visually preserve the relational information they convey;
· (2) Must have the following compatibilities:
· (i) Computer compatibility: PC or Mac®;
· (ii) Operating system compatibility: MS–DOS®, MS-Windows®, Mac OS®, or Unix®/Linux®.
· (3) Must be in ASCII plain text, where:
· (i) All printable characters (including the space character) are permitted;
· (ii) No nonprintable (ASCII control) characters are permitted, except ASCII Carriage Return plus ASCII Line Feed (CRLF) or Line Feed (LF) as line terminators.
· (4) Must be named as *.txt, where "*" is one character or a combination of characters limited to upper- or lowercase letters, numbers, hyphens, and underscores and does not exceed 60 characters in total, excluding the extension. No spaces or other types of characters are permitted in the file name; and
· (5) Must be incorporated by reference in a separate paragraph of the specification, in accordance with § 1.77(b)(5).
· (e) "Large Tables" submitted via the USPTO patent electronic filing system must not exceed 25 MB, and file compression is not permitted.
· (f) "Large Tables" submitted in compliance with § 1.52(e) via read-only optical disc must meet the following requirements:
· (1) The ASCII plain text file may be compressed using WinZip®, 7-Zip, or Unix®/Linux® Zip;
· (2) A compressed file must not be self-extracting; and
· (3) A compressed ASCII plain text file that does not fit on a single read-only optical disc may be split into multiple file parts in accordance with the target read-only optical disc size and labeled in compliance with § 1.52(e)(5)(vi).
· (g) Any amendments to "Large Tables" in electronic form in ASCII plain text format must include:
· (1) A replacement ASCII plain text file, in accordance with the requirements of paragraphs (d) through (f) of this section, submitted via the USPTO patent electronic filing system or on a read-only optical disc, in compliance with § 1.52(e), labeled as "REPLACEMENT MM/DD/YYYY" (with the month, day, and year of creation indicated);
· (2) A request that the amendment be made by incorporation by reference of the material in the replacement ASCII plain text file, in a separate paragraph of the specification (replacing any prior such paragraph, as applicable) identifying the name of the file, the date of creation, and the size of the file in bytes (see § 1.77(b)(5) );
· (3) A statement that identifies the location of all deletions, replacements, or additions to the ASCII plain text file; and
· (4) A statement that the replacement ASCII plain text file contains no new matter.
· (h) The specification of an application with "Large Tables" as an ASCII plain text file, present on the application filing date, without an incorporation by reference of the material contained in the ASCII plain text file, must be amended to contain a separate paragraph incorporating by reference the material contained in the ASCII plain text file, in accordance with § 1.77(b)(5).
· (i) Any read-only optical disc for "Large Tables" must be submitted in duplicate. The read-only optical disc and duplicate copy must be labeled "Copy 1" and "Copy 2," respectively. The transmittal letter that accompanies the read-only optical discs must include a statement that the two read-only optical discs are identical. In the event that the two read-only optical disc copies are not identical, the Office will use the read-only optical disc labeled "Copy 1" for further processing.
· (j) Any amendment to the information on a read-only optical disc must be by way of a replacement read-only optical disc, in compliance with paragraph (g) of this section, where the replacement read-only optical disc and copy must be labeled "COPY 1 REPLACEMENT MM/ DD/YYYY" (with the month, day, and year of creation indicated), and "COPY 2 REPLACEMENT MM/DD/YYYY," respectively.
The USPTO prefers that specifications having tables are submitted electronically via the USPTO patent electronic filing system. However, any specification and/or tables submitted on physical sheets of paper should conform to the applicable provisions of 37 CFR 1.52 and 37 CFR 1.58 and will be subject to a non-electronic filing fee. See 37 CFR 1.16(t). When tables must be disclosed in a patent application in order to provide a complete disclosure, use of paper copies can become burdensome. In the past, all disclosures forming part of a patent application were presented on paper with the exception of "Sequence Listings" and a "Computer Program Listing Appendix". Under 37 CFR 1.58(c) et seq., several different methods for submitting "Large Tables" are set forth, including submitting ASCII plain text files on read-only optical disc(s) in the form of CD-ROM, CD-R, DVD-R, or DVD+R. Applicant(s) may also submit "Large Tables" as ASCII plain text files via the USPTO patent electronic filing system.
See MPEP § 608.05, subsection I., for details pertaining to submission of ASCII plain text files via the USPTO patent electronic filing system, and subsection III., for details pertaining to submissions on read-only optical disc(s). Also, substantial details regarding submitting ASCII plain text files are incorporated into 37 CFR 1.58(c) et seq., which are discussed more in subsection I below, and subsection II below discusses the treatment of lengthy tables in a specification for patents and patent application publications.
As defined in 37 CFR 1.58(c), "Large Tables" that may be submitted in electronic form in ASCII plain text are 1) any individual table that is more than 50 pages in length, or 2) multiple tables, if the total number of pages of all the tables in an application exceeds 100 pages in length. A table page is a page printed on paper, in conformance with 37 CFR 1.58(b). The presentation of a subheading to divide a large table into smaller sections of less than 51 pages should not be used to prevent an applicant from submitting the table in electronic form in ASCII plain text unless the subdivided tables are presented as numerous files so as to lose their relationship to the overall large table. A single table contained on 50 pages or less and multiple tables contained on 100 pages or less must be submitted either as drawings (in compliance with 37 CFR 1.84 ) or as part of the specification on physical sheets of paper (in compliance with 37 CFR 1.52 ) or via the USPTO patent electronic filing system (in compliance with the Legal Framework for Patent Electronic System (see MPEP § 502.05)). When submitting "Large Tables" as ASCII plain text files, each table should be submitted as a separate text file. Further, the file name for each table should indicate which table is contained therein. It is noted that "Large Tables" cannot be filed in ASCII plain text in an international application during the international stage (see 37 CFR 1.58(c) ).
The text files submitted via the USPTO patent electronic filing system or stored on read-only optical disc(s) containing the "Large Tables" must contain only ASCII characters. All printable characters (including the space character) are permitted, but no nonprintable (ASCII control) characters are permitted, except ASCII Carriage Return plus ASCII Line FEED (CRLF) or Line Feed (LF) as line terminators. No special formatting characters or proprietary file formats are permitted. Accordingly, great care must be taken so that the spatial arrangement of the data in rows and columns is maintained in the table when the file is opened for viewing at the Office. This will allow the table to be viewed with virtually any text viewer. See 37 CFR 1.58(d). "Large Tables" submitted in ASCII plain text must be compatible with PC or Mac® computers and with MS-DOS®, MS-Windows®, Mac OS®, or Unix®/Linux® operating systems. See 37 CFR 1.58(d)(2). Also, "Large Tables" submitted in ASCII plain text must have a file name with a ".txt" extension. See 37 CFR 1.58(d)(4), provides all the requirements for the file name. Further, "Large Tables" submitted in ASCII plain text must be incorporated by reference in a separate paragraph of the specification, in accordance with 37 CFR 1.77(b)(5). See 37 CFR 1.58(d)(5).
There is a 25 MB size limit for "Large Tables" files submitted in ASCII plain text via the USPTO patent electronic filing system with file compression not being permitted. See 37 CFR 1.58(e). It is noted that it may be possible to break up a "Large Tables" file that is larger than 25 MB into multiple files that are 25 MB or less in size and submit those smaller files via the USPTO patent electronic filing system, as per the Legal Framework for Patent Electronic System (www.uspto.gov ). See also MPEP § 608.05(I)(C).
While "Large Tables" files submitted in ASCII plain text via the USPTO patent electronic filing system cannot be compressed, "Large Tables" submitted in compliance with 37 CFR 1.52(e) via read-only optical disc(s) are now able to be compressed. See 37 CFR 1.58(f). Compression was allowed to significantly reduce the number of physical media required to accommodate large files. The "Large Tables" file may be compressed using WinZip®, 7-Zip, or Unix®/Linux® Zip, and the compressed file must not be self-extracting. If after compression, a compressed "Large Tables" file still does not fit on a single read-only optical disc, the compressed file may be split into multiple file parts in accordance with the target read-only optical disc size and labeled in compliance with 37 CFR 1.52(e)(5)(vi).
In order to amend "Large Tables" in ASCII plain text format, a replacement ASCII plain text file, in accordance with 37 CFR 1.58(d) -(f), must be submitted via the USPTO patent electronic filing system or on a read-only optical disc, in compliance with 37 CFR 1.52(e). Any read-only optical disc with a replacement ASCII plain text file must be labeled as "REPLACEMENT MM/DD/YYYY" with the month, day, and year of creation indicated. When the information is filed on a read-only optical disc initially, amendments cannot be made to the information using the USPTO patent electronic filing system, but instead must be made using a replacement read-only optical disc. See 37 CFR 1.52(e)(7) and 1.58(j). Also, a request must be made that the material in the replacement ASCII plain text file be incorporated by reference in a separate paragraph of the specification (replacing any prior such paragraph, as applicable) identifying the name of the file, the date of creation, and the size of the file in bytes. See 37 CFR 1.77(b)(5). A statement must be provided that identifies the location of all deletions, replacements, or additions to the ASCII plain text file so that the changes made to the information contained in the submission can be more easily and accurately identified. Another statement that the replacement ASCII plain text file contains no new matter must also be provided. See 37 CFR 1.58(g). The Office may also require that a replacement ASCII plain text file be submitted if, for example, the information on a read-only optical disc is corrupted.
"Large Tables" filed as an ASCII plain text file on the date that the application was accorded a filing date are to be treated as part of the originally filed disclosure even if the requisite "incorporation by reference" statement (see 37 CFR 1.77(b)(5) ) is omitted. Similarly, if a preliminary amendment accompanies the application when it is filed in the Office and the preliminary amendment includes "Large Tables" as an ASCII plain text file, the "Large Tables" will be treated as part of the original disclosure. The "Large Tables" are considered part of the original disclosure by virtue of its inclusion with the application on the date the application is accorded a filing date. The incorporation by reference statement of the material in the ASCII plain text file is required to be part of the specification so it is clear to the Office, the printer, and the public that the application as originally filed includes the "Large Tables" in the ASCII plain text file. The examiner should require applicant(s) to insert this statement if it is omitted. See 37 CFR 1.58(h). Also, if the application would otherwise be in condition for allowance, the examiner may insert the statement by examiner’s amendment with a notice of allowance after receiving authorization from the applicant. See MPEP § 1302.04 and 37 CFR 1.121(g).
Read-only optical discs containing "Large Tables" must be submitted in duplicate and labeled as "Copy 1" and "Copy 2" respectively. The transmittal letter that accompanies the read-only optical discs must include a statement that the two read-only optical discs are identical. In the event that the two read-only optical disc copies are not identical, the Office will use the read-only optical disc labeled "Copy 1" for further processing. See 37 CFR 1.58(i). Two discs would be considered not identical when, e.g., the files contained on those discs are not the same. Duplicate copies for "Large Tables" are required to be submitted since the OPAP keeps a first copy for record retention purposes and a second copy in an artifact folder for use by the examiner during the patent examination process.
Any amendment to the information on a read-only optical disc containing "Large Tables" must be by way of replacement read-only optical discs submitted in duplicate in compliance with 37 CFR 1.58(g). The replacement read-only optical disc and copy must be labeled "COPY 1 REPLACEMENT MM/DD/YYY" (with the month, day, and year of creation indicated), and "COPY 2 REPLACEMENT MM/DD/YYYY," respectively. When the information is filed on a read-only optical disc initially, amendments cannot be made to the information using the USPTO patent electronic filing system, but instead must be made using a replacement read-only optical disc. See 37 CFR 1.52(e)(7) and 1.58(j).
While most tables filed with patent applications are intended to be rendered in portrait mode, "Large Tables" are permitted to be in landscape orientation if they cannot be presented satisfactorily in portrait orientation. Viewing documents in Private PAIR or Patent Center or by examiners in their desktop examination tools permit rotating pages from portrait to landscape and vice versa.
The cost of printing long tables in patent documents is very expensive to the U.S. Patent and Trademark Office. Accordingly, if tables on more than two hundred consecutive pages, or large numbers of tables (lengthy tables) are submitted on a read-only optical disc or as text files submitted via the USPTO patent electronic filing system as provided in 37 CFR 1.52(e) and 1.58(c), or in an electronic format (XML, tab-delimited text, Microsoft Excel, Microsoft Work, Corel WordPerfect) in response to a "Request to Voluntarily Supply Lengthy Table(s) in Electronic Format" from the Office of Data Management, these lengthy tables will not be published as part of a patent document (e.g., patent or patent application publication. The lengthy tables will be published separately on the sequence homepage of the USPTO website (https://seqdata.uspto.gov ). See, for example, patent application publication nos. US 20030235811 A1 and US 20030237110 A9.
Should an applicant need to include numerous tables in the specification, and such tables are on more than two hundred consecutive pages or large numbers of tables (lengthy tables) are present in the specification, such tables may be submitted as "Large Tables" in ASCII plain text in accordance with 1.58(c). If a lengthy table is embedded in the specification of a patent application, and if the lengthy table is available in an electronic form (either XML or a format convertible to XML), when the patent or patent application publication is published, the following single-column statement will be inserted in place of each replaced table in the document.
LENGTHY TABLE
Lengthy table referenced here [Insert File Name]. Please refer to the end of the specification for access instructions.
When the lengthy tables are separately published on the USPTO website, there will be a standardized lengthy table statement, in the patent document following the detailed description (see 37 CFR 1.77(b)(10) ).
For a patent application publication, the following page-wide text would appear:
LENGTHY TABLES
The patent application contains a lengthy table section. A copy of the table is available in electronic form from the USPTO web site (https://seqdata.uspto.gov/?pageRequest=docDetail& DocID=[publication number] ). An electronic copy of the table will also be available from the USPTO upon request and payment of the fee set forth in 37 CFR 1.19(b)(3).
For a patent, the following page-wide text would appear:
LENGTHY TABLES
The patent contains a lengthy table section. A copy of the table is available in electronic form from the USPTO web site (https://seqdata.uspto.gov/?pageRequest=doc Detail&DocID=[patent number] ). An electronic copy of the table will also be available from the USPTO upon request and payment of the fee set forth in 37 CFR 1.19(b)(3).
Form paragraphs 6.63.01 and 6.63.02 may be used to notify applicant of corrections needed to comply with the requirements of 37 CFR 1.52(e) and 37 CFR 1.58(c) et seq. with respect to tables.
The description portion of this application contains a table consisting of less than fifty one (51) pages only in ASCII text format submitted either via the Office Electronic Filing System or on read-only optical disc. In accordance with 37 CFR 1.58(c)(1), only a table of at least fifty one (51) pages may be submitted as an ASCII text file. Accordingly, applicant is required to cancel the references to the table in text format appearing in the specification on pages [1] , file a paper version of the table in compliance with 37 CFR 1.52 or file a PDF version via EFS-Web, and change all appropriate references to the former table in text format to the newly added paper or PDF version of the table in the remainder of the specification.
1. This form paragraph must be used whenever a table on a read-only optical disc or submitted as a text file via the Patent Electronic System consisting of less than fifty one (51) pages as part of the descriptive portion of the specification is filed on or after September 8, 2000. See MPEP § 608.05(b).
2. In bracket 1, insert the range of page numbers of the specification which reference the table.
This application contains a table in ASCII text format submitted either via the Office Electronic Filing System or on read-only optical disc. "Large Tables" submitted as an ASCII text file in compliance with 37 CFR 1.58(d)(1) must maintain the spatial orientation of the cell entries. The table submitted does not maintain the data within each table cell in its proper row/column alignment. The data is misaligned in the table as follows: [1] . Applicant is required to submit a replacement text file via the Office Electronic Filing System or on read-only optical disc with the table data properly aligned.
1. This form paragraph must be used whenever the data in a table cannot be accurately read because the data in the table cells do not maintain their row and column alignments.
2. In bracket 1, insert the area of the table that does not maintain the row and column alignments.
Applications disclosing nucleotide and/or amino acid sequences, as defined in 37 CFR 1.821(a) for applications filed before July 1, 2022 or as defined in 37 CFR 1.831(b) for applications filed on or after July 1, 2022, are required to provide the biological sequence information in a sequence listing.
For applications filed before July 1, 2022, the sequence listing can be a "Sequence Listing" (as an ACSII plain text file in compliance with 37 CFR 1.821 -1.824 ) submission must be submitted via the USPTO patent electronic filing system or on read-only optical disc. See MPEP §§ 2420 et seq. for detailed information.
For applications filed on or after July 1, 2022, the sequence listing must be a "Sequence Listing XML" (as an XML file in compliance with 37 CFR 1.831 -1.834 ) submission can be submitted via the USPTO patent electronic filing system or on read-only optical disc. See MPEP §§ 2412-2419 for detailed information.
· (a) In order for an applicant for a patent or for a reissue of a patent to have an information disclosure statement in compliance with § 1.98 considered by the Office during the pendency of the application, the information disclosure statement must satisfy one of paragraphs (b), (c), or (d) of this section.
· (b) An information disclosure statement shall be considered by the Office if filed by the applicant within any one of the following time periods:
· (1) Within three months of the filing date of a national application other than a continued prosecution application under § 1.53(d);
· (2) Within three months of the date of entry of the national stage as set forth in § 1.491 in an international application;
· (3) Before the mailing of a first Office action on the merits;
· (4) Before the mailing of a first Office action after the filing of a request for continued examination under § 1.114; or
· (5) Within three months of the date of publication of the international registration under Hague Agreement Article 10(3) in an international design application.
· (c) An information disclosure statement shall be considered by the Office if filed after the period specified in paragraph (b) of this section, provided that the information disclosure statement is filed before the mailing date of any of a final action under § 1.113, a notice of allowance under § 1.311, or an action that otherwise closes prosecution in the application, and it is accompanied by one of:
· (1) The statement specified in paragraph (e) of this section; or
· (2) The fee set forth in § 1.17(p).
· (d) An information disclosure statement shall be considered by the Office if filed by the applicant after the period specified in paragraph (c) of this section, provided that the information disclosure statement is filed on or before payment of the issue fee and is accompanied by:
· (1) The statement specified in paragraph (e) of this section; and
· (2) The fee set forth in § 1.17(p).
· (e) A statement under this section must state either:
· (1) That each item of information contained in the information disclosure statement was first cited in any communication from a foreign patent office in a counterpart foreign application not more than three months prior to the filing of the information disclosure statement; or
· (2) That no item of information contained in the information disclosure statement was cited in a communication from a foreign patent office in a counterpart foreign application, and, to the knowledge of the person signing the certification after making reasonable inquiry, no item of information contained in the information disclosure statement was known to any individual designated in § 1.56(c) more than three months prior to the filing of the information disclosure statement.
· (f) No extensions of time for filing an information disclosure statement are permitted under § 1.136. If a bona fide attempt is made to comply with § 1.98, but part of the required content is inadvertently omitted, additional time may be given to enable full compliance.
· (g) An information disclosure statement filed in accordance with this section shall not be construed as a representation that a search has been made.
· (h) The filing of an information disclosure statement shall not be construed to be an admission that the information cited in the statement is, or is considered to be, material to patentability as defined in § 1.56(b).
· (i) If an information disclosure statement does not comply with either this section or § 1.98, it will be placed in the file but will not be considered by the Office.
· (a) Any information disclosure statement filed under § 1.97 shall include the items listed in paragraphs (a)(1), (a)(2) and (a)(3) of this section.
· (1) A list of all patents, publications, applications, or other information submitted for consideration by the Office. U.S. patents and U.S. patent application publications must be listed in a section separately from citations of other documents. Each page of the list must include:
· (i) The application number of the application in which the information disclosure statement is being submitted;
· (ii) A column that provides a space, next to each document to be considered, for the examiner’s initials; and
· (iii) A heading that clearly indicates that the list is an information disclosure statement.
· (2) A legible copy of:
· (i) Each foreign patent;
· (ii) Each publication or that portion which caused it to be listed, other than U.S. patents and U.S. patent application publications unless required by the Office;
· (iii) For each cited pending unpublished U.S. application, the application specification including the claims, and any drawing of the application, or that portion of the application which caused it to be listed including any claims directed to that portion; and
· (iv) All other information or that portion which caused it to be listed.
· (3)
· (i) A concise explanation of the relevance, as it is presently understood by the individual designated in § 1.56(c) most knowledgeable about the content of the information, of each patent, publication, or other information listed that is not in the English language. The concise explanation may be either separate from applicant’s specification or incorporated therein.
· (ii) A copy of the translation if a written English-language translation of a non-English-language document, or portion thereof, is within the possession, custody, or control of, or is readily available to any individual designated in § 1.56(c).
· (b)
· (1) Each U.S. patent listed in an information disclosure statement must be identified by inventor, patent number, and issue date.
· (2) Each U.S. patent application publication listed in an information disclosure statement shall be identified by applicant, patent application publication number, and publication date.
· (3) Each U.S. application listed in an information disclosure statement must be identified by the inventor, application number, and filing date.
· (4) Each foreign patent or published foreign patent application listed in an information disclosure statement must be identified by the country or patent office which issued the patent or published the application, an appropriate document number, and the publication date indicated on the patent or published application.
· (5) Each publication listed in an information disclosure statement must be identified by publisher, author (if any), title, relevant pages of the publication, date, and place of publication.
· (c) When the disclosures of two or more patents or publications listed in an information disclosure statement are substantively cumulative, a copy of one of the patents or publications as specified in paragraph (a) of this section may be submitted without copies of the other patents or publications, provided that it is stated that these other patents or publications are cumulative.
· (d) A copy of any patent, publication, pending U.S. application or other information, as specified in paragraph (a) of this section, listed in an information disclosure statement is required to be provided, even if the patent, publication, pending U.S. application or other information was previously submitted to, or cited by, the Office in an earlier application, unless:
· (1) The earlier application is properly identified in the information disclosure statement and is relied on for an earlier effective filing date under 35 U.S.C. 120; and
· (2) The information disclosure statement submitted in the earlier application complies with paragraphs (a) through (c) of this section.
Information Disclosure Statements (IDSs) are not permitted in provisional applications filed under 35 U.S.C. 111(b). See 37 CFR 1.51(d). Since no substantive examination is given in provisional applications, a disclosure of information is unnecessary. Any such statement filed in a provisional application will be returned or destroyed at the option of the Office.
In nonprovisional applications, applicants and other individuals substantively involved with the preparation and/or prosecution of the application have a duty to submit to the Office information which is material to patentability as defined in 37 CFR 1.56. The provisions of 37 CFR 1.97 and 37 CFR 1.98 provide a mechanism by which patent applicants may comply with the duty of disclosure provided in 37 CFR 1.56 using an IDS. The IDS may be filed using form PTO/SB/08. Applicants and other individuals substantively involved with the preparation and/or prosecution of the patent application also may want the Office to consider information for a variety of other reasons; e.g., to make sure that the examiner has an opportunity to consider the same information that was considered by these individuals, or by another patent office in a counterpart or related patent application filed in another country.
Third parties (individuals not covered by 37 CFR 1.56(c) ) cannot file information disclosure statements under 37 CFR 1.97 and 37 CFR 1.98. Third parties may only submit patents and publications in compliance with 37 CFR 1.290 in applications published under 35 U.S.C. 122(b). See MPEP § 1134.01. For unpublished, pending applications, any member of the public, including private persons, corporate entities, and government agencies, may file a protest under 37 CFR 1.291 prior to the mailing of a notice of allowance under 37 CFR 1.311. See MPEP Chapter 1900. Alternatively, third parties may provide information to the applicant who may submit the information to the Office in an IDS. See 37 CFR 1.56(d). The Office will review any submission in an application filed by a third party to determine whether the submission is in compliance with 37 CFR 1.290 or 1.291. Any third-party submission that does not comply with the requirements of 37 CFR 1.290 or 37 CFR 1.291 will not be entered into the application file and will be discarded. Office personnel (including the Patent Examining Corps) are instructed to: (1) not reply to or act upon any third-party inquiry or other submission in an application, except those in compliance with 37 CFR 1.290 or 37 CFR 1.291; and (2) decline to accept oral or telephone comments or submissions about applications from third parties. See MPEP § 1134.01.
An information disclosure statement filed in accordance with the provisions of 37 CFR 1.97 and 37 CFR 1.98 will be considered by the examiner assigned to the application. Individuals associated in a substantive way with the filing and prosecution of a patent application are encouraged to submit information to the Office so the examiner can evaluate its relevance to the claimed invention. The procedures for submitting an information disclosure statement under the rules are designed to encourage individuals to submit information to the Office promptly and in a uniform manner. These rules provide certainty for the public by defining the requirements for submitting information disclosure statements to the Office so that the Office will consider information contained therein before a patent is granted.
The filing of an information disclosure statement shall not be construed as a representation that a search has been made.
