400

1 printed pages contain little extracted OCR body text; searchable legal-body completeness has not been established for those pages.

OCR transcription for search; preserved printed pages are authoritative

Section 4. TYPES, CROSS-NOTING AND STATUS OF APPLICATIONS

4-1

Types

.1-1

Joint

-1 .2

Sole

- 1 - 3.

Convertible from Joint to A Sole Application

.1 - 4.

Parent, Original

-1-5

Reissue

-1-6.

Divisional

-1 7

Continuation

-1-8.

Continuation-in-part

-. 1- 9

Substitute

-1 - 10.

Refile

-. 1 . 11

Continuity between Applications

- 1 -11 .1 .

Assignment Carries Title

-- 1-12.

When Entitled to Filing Date

-1-13.

International Convention

-1-14.

Proving of Foreign Filing for "Normal" Priority

- 1- 14 1

Examiner's Determination of Foreign Filing

-1- 15.

Public Law 690

-1-19 1

Time Limits for Obtaining Benefit of Law

. 1-15 2

Countries Listed

.1-15 4

Allegation as to Citizenship in Reciprocating Country

- 1 - 19 9

Proof of Contents of Foreign Application

-1-15 6

Effect of Term of Patent

-1 - 19 7

When No Papers Have Boon Filed

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4-1-15.8.

Filing of Papers Does Not Excuse A Reply to An Action

-1-15.9.

Requirements of the Statuto

-1-15.10.

Examiner Must Determine Right to Rely on Foreign Patent

-1-15.11.

Action by the Examiner

-1-15.12.

Applications on Appeal

-1-15.13.

Applications in Interference

-1-15.14.

Application Oath

-1-15.15.

Submission of Cases to Supervisory Examiner

-1-16.

Fee Exempt, Government-Owned

-2.

Cross Noting

-2-1.

In Specification

-2-2.

On File Wrapper of Division, Continuation, Substitution, or Continuation-in-part

-2-3.

On File Wrapper when Foreign Application Is Acknowledged

-2-4.

Foreign Patent Granted after Date of Specifi- cation

-2-5.

In Oath

-2-6.

In Case of Reissue

-2-7.

Matter Disclosed but Not Claimed in Patent

-2-8.

Derogatory Remarks Prohibited

-2-9.

Data of Applications Referred to Must Be Brought Up to Date

-3.

Status of Applications

-3-1.

New

-3-2.

Amended

-3-4.

Allowed

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4-3-5.

Abandoned

-3-5.1.

Incomplete

-3-6

Forfeited

-3-7.

Status Letter

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4\.
TYPES, CROSS-NOTING AND STATUS OF APPLICATIONS

# 4 1 Types of Application

Patent applications fall into three broad types.
viz., applications for "mechanical," design, and plant
patents. The term "mechanical," as here employed, em-
braces all applications and patents which are directed
to a "new and useful art, machine, manufacture, or com-
position of matter; or to any new and useful improvement
thereof ." The specialized procedure which pertains to the
examination of applications for design and plant patents
will be treated in detail in sections 17 and 18 respectively .
4-1 - 1.
Joint

A joint application is one which gets forth two or
more persons as the common inventors of the claimed subject
matter

4-1 -2.
Sole

An application wherein the invention is presented
as that of a single person is termed a sole application.

## 4-1-3 Convertability from a Joint to A Sole Application

Å sole application may be substituted for a joint
application, or the joint application amended to a sole
application on the filing of the proper disclaimer by the
surrendering joint applicant and oath by sole inventor.
Sec In re Roberts, 1920 C.D. 158; 273 0.G. 410. where such
change is made the file should be sent to the Application
Branch for revision of the record ..

The conversion of a sole into a joint application is
not permitted. Ex parte Bones, 1925 C.D. 79, 339 O.G. 499.

When a joint appliention in interference is changed
to a sole application, the Examiner of Interferences calls
the attention of the Primary Examiner to this fact. The
Primary examiner requests jurisdiction of the Interference.
enters the necessary amendments made to the application,
redeclares the int. . ference to accord there ith and re-
turns the files to the examiner of interferences \For
letter forms, see sec. 13). however, before redeclaring
the interference, the examiner should make certain that
the proposed conversion from joint to sole meets the con-
ditions set forth in in ro rerrin, 1944 C D. 380, 565
0 G 151

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when on motion a sole application is to be sub-
stituted for a joint application the primary examiner
redeclares the interference, substituting the sole for
the joint application. (For letter forms, so0 Sec. 13) .
4-1-4.
original or Parent

These terms are interchangeably applied to the
first application of an inventor disclosing a given
invention. such invention may or may not be claimed
in this application.

## CONTINUING APPLICATIONS

4-1-5.
Heissue

A reissue application is an application for A
patent to take the place of an unexpired patent that is
defective in some one or more particulars.

A detailed treatment of reissues will be found
in Section 16.

4-1-6.

## Divisional

A later application carved out of a pending
application by the same applicant and showing and
claiming nothing not disclosed in the earlier or
parent application is known as a divisional appli-
cation. Sometimes, as in the case of a process ap-
plication divided from an apparatus application,
the divisional application may have the same speci-
fication and drawing as the parent cose. Where
both applications are for apparatus inventions, there
is usually no necessity or excuse for reproducing in
the divisional cose the entire specification and
Grawing of the parent application.

while a divisional application may depart from
the phraseology used in the parent case there may be
no departure therefrom in substance or variation in
the drawing that would amount to "new matter" if in-
troduced by mendmont into the parent case.

A divisional application is also referred to as
a "division" of the parent case.

4-1-7.
Continuation

A continuation is a second application for the
some invention claimed in a prior application by the
same applicant filed before the original becomes
abandoned. Where an application has been prosecuted

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to a final rejection an applicant my hay. r ..
course to filing a continuation in order to in-
troduce into the case a new set of clubs and to
establish a right to further examination by the
primary examiner. If the new claims, however, gre
in the opinion of the Examiner met, in the art of
record in the original application, the Examiner
may make his rejection final on the first cotion
on the continuation. (Sec. 10-8-48). If rejection
is based on res adjudicata, however, it may not
be made final, since this is a new issue.

A continuation, as is also truc of n contin-
uation-in-part and a divisionel application, may
be filed after appeal to the Board or to the
Court, provided the parent application hes not
become abandoned, 'Sec. 10-11-19). A continuation
or continuation-in-part may be filed after the ap-
plication has pone to Issue ( In re Febrey, 1943
C. D. 510, 554 O.G. 377) and this holds for the three
months' period where the final fee is prid on the
last day of the six months and a three months' ex-
tension is asked.

A sole application may be a continuation
of a joint application which was erroneously
jointly filed. (Union Switch, v. Kodel. 1932 C.D
530,416 O.G. 3).

See conditions stated under "Division'.1,"
supra.

4-1-8
Continuation-in Part

This is an application filed during the
lifetime of ah earlier application by the samo
applicant, repeating some substantial portim or
all of the earlier application, and : dding matter
not disclosed in the said earlier caer. (in re
Klein, 1930 C.D. 2 999 0.G. 519).

A continuation-in-part filed by a sole up-
plicant may also derive from an earlier joint appli-
cation showing a portion only of the subject matter
of the later application, subject to the conditions
stated hereinafter in the case of e Bole areiaional
application stemming from a joint application, (4-1
-12) and the further condition that the app Ileant
present an exact line of division between w ttera
of joint invention and sole invention (In re
Perrin, 1944 C D 320,564 0.0 151 .)

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4-1-9.

## Substitute

The use of the term "Substitute" to deg-
ignate an application which is in essence the duplicate
of an application by the same applicant abandoned be-
fore the filing of the later case, finds official
recognition in the decision, Ex parte Komenak, 1940
\- C.D. 512 O.G. 739.

A substitute is not entitled to the benefit of
the filing date of the original application for A
constructive reduction to practice. (In re Spitteler
et al., 1908 C.D. 374;134 O.G., 1301.

At most, such filing date can be Availed of
only as the date of conception, leaving the question
of diligence to be determined as bridging any gap between
the date of a reference and the filing date of the sub-
stitute application.

Any public use or patent or printed publication
prior to the filing date of the substitute even though
junior to the earlier application, if it discloses the
subject matter of the claims, is a proper citation in
the substitute application.

4-1-10 €
Re-file

No official definition has been given the term
Re-file, though it is sometimes used as an alternative
to the term Substitute .

If the applicant designates his application as
"re-file" and the examiner finds that the application
is in fact a duplicate of a former application by the
same party which was abandoned prior to the filing of
the second case, the Examiner should require the sub-
stitution of the word substitute for "re-file," since
the former term has official recognition. The en-
dorsement on the file wrapper that the case is a
"substitute" will result in the further endorsement
by the Assignment Branch of any assignment of the pa-
rent case that may have been made.

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TABLE ILLUSTRATING CONTINUITY BETWEEN APPLICATIONS

Not

Co-pending

Co-ponding

LESS disclosure

in second case

Division

SAME disclosure in second case

Continuation

Substitute

MORE disclosure

... second case

Continuation-

ir-part

All applications which come under the des-
ignations listed in the center column of the table
are linked by co-pendency with the original or pa-
rent application; they also contain, in whole or in
part, disclosure in common with the original ap-
lication. Such applications are entitled to the
effective filing date of the original application
for the common subject matter disclosed.

A substitute application, as seen from the
table, is not linked by co-pendency with the orig-
inal application, and is not entitled to the effect-
ive filing date of the latter. As a matter of pub-
lic policy, however, all substitute applications
are required to include n reference to the origi-
nnl application. one reason being to make the orig-
inel application accessible to the public for a
fuller understanding of the basis for the allow-
ance of claims in the substitute application.

It will be noted that two blank spaces oc-
cur in the table. Applications of the kind which
would correspond to these blank spaces are not dis-
tinguished by any special nome. No special treat-
ment is involved in examining such applications ..

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### 4-1-11.1. Assignment Carries Title

Assignment of an original application carries
title to any divisional, continuation, or substitute
application stemming from the original application.

4-1-12.
When Entitled to Filing Date

In asmuch as a division, a continuation or a
continuation-in-part is construed as an amendment of
the parent application und therefore given the benefit
of the filing date of said parent application, such
division, continuation, or continuation-in-part may
be filed at any time during the pendenoy of the appeal
( that is, prior to or not later than withdrawal of the
appeal) and be entitled to the benefit of the filing
date of the parent application, provided six months
have not elapsed from the date of the final rejection.
Sec. 10-11-19.

Since a joint application may, when the facts
warrant it, be transformed into a sole application,
u sole application may be a division of s joint appli-
cation may be a division if the joint application con-
tained and claimed an invention which was solely that
of one of the joint applicants.

However, the following conditions must obtain:
(e) The invention must have been cluimed in
the joint application.

(b) It must appear that the joint application
was filed "by mistake and without fraudulent intention."

(c) On discovery of the mistake the porty fil-
ing the sole application "must uct with reasonable dil-
igence *and must assume the burdon of establishing his
good faith."

(d) There must be filed in the sole application
a, disclaimer by euch of the other parties of the joint
application.

A later joint application, however, may not be
tormed a division of a prior application filed by one
of the joint inventors. This follows from the doctrine
of ex parte Bones, 1925 C.D. 75;399 O.G. 499.

4-1-13.
International Convention

Sec. 4887. R.S. No person otherwise entitled
thereto shull be debarred from receiving u patent for
his invention or discovery, nor shall any patent be de-
clured invalid by reason of its having been first
patented or caused to be patented by the inventor or
his legal representatives or assigns in a foreign

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country , unless the ap: fication for Baja forei n
patent was filed more than thei've canthawww.pelor
to the filing of the application in this country
in which e se no a tent should be granted in this
country.

An application for pat nt for an Invention
or discvery .. filed in this country by : ny por
son who has previously regularly Il tema Tica
tion for a patent for the same invention or dis.
covery in a foreign country, which by tronty,
convention, or law, affords si il r privileges to
citizens of the United States shall have the same
force and effect as the same applies tion would have
if filed in this country on the d' te on which the
application for patent for the same invention or
discovery .... was first filed in such forelen coun-
try, provided the application in this country is
filed within twelve months. .. . from the earliest
date on which any such foreign application was
filed. But no patent shall be granted on on up
plication for patent for an invention or discov-
ery . which had been patented or described in a
printed public tion in this country or which h :
been in public use or on sale in this country for
more than one year prior to such filing.

In the case of designs, the period is nix
months instead of twelve.

The first paragraph of R.S. 4887 establishes
four conditions which. if all are present, estab
lish a bar against the granting of a potent in this
country. These four conditions are as follows
(1) The foroien application must be filed
more thim one year before the filing in the United
States. (Modified by Public Law 690. Sec, 4- 1-15 )
(2) It must be filed by the inventor or some.
one "orivy" to lim.

(3) The foreign patent must be setually grant.
ed (e.g. by sending of the papers in Great Jantain. )
(4) The same invention must be involved ..
The second paragraph of the statute accords
what is known as a "right of priority" to applicant
under certain conditions, which conditions are defined
by an international tresty or agreement known as the
International Convention for the Protection of Indus-
trial Property. There are now forty countries, in
cluding the United States, adhering to this convent
ion.

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The primary object of the convention is
stated to be the equal treatment of nationals of
all participating countries. In pursuance of this
policy, a filing of an application in any country
which adheres to the Convention is treated as hav-
ing the legal, or constructive, effect of a filing
in all countries, provided it is followed up, with-
in twelve months, by an actual filing there.

The inventor's priority rights under the Con-
vention are based, not upon his citizenship, but up-
on the status of the country, in which the earliest
foreign filing was made, as a porty to the Interna-
tional Convention.

#### 4-1-14. Proving of Foreign Filing "Normal" Priority

## Rule 9.1 Oath of Applicant

If any application for patent has been
filed in any foreign country by the appli-
cant in this country, or by his legul re-
pesentatives or assigns, prior to his ap-
plication in this country, he shall state
the country or countries in which such ap-
plication has been filed, giving the date
of such application, and shall also state
that no application has been filed in any
other country or countries than those
mentioned, und if no application for patent
has been filed in any foreign country, he
shall so state. This outh must be sub-
scribed to by the affiant.

No proof of the earlier filing is required,
unless a reference is brought to light which has an
effective date earlier than applicant's United States
filing date but later than the date of his foreign
filing under the convention. Where the applicant
acknowledges in his oath a first filed foreign ap-
plication less than twelve months prior to his U.S.
filing date, but antedating the reference, such
foreign application will serve to void the reference
if a certified copy of the foreign application is
filed, together with a sworn translation if the copy
be not in English.

### 4-1-14.1. Examiner's Determination of Right of Priority

The most important aspect of the examiner's

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action pertaining to a richt of priority because
of a foreign filing is the determination of the
identity of invention between the U.S. application.
If it is for the same invention, the foreign appli-
cution may be considered in the same manner that
a duplicate U.S. application, filed on the same
date, would be considered, and applicant is enti-
tled to any claims based on such applic tion that
he would be entitled to under our laws and practice.
The foreign application must be examined for the
question of sufficiency of the description under
R.S. 4888, as well as to deter ine if there is a
basis for the claims sought. In some cases the
matter of sufficiency of disclosure in the sense
of having a sufficient basis for certain types of
claims, as in chemical cases, may arise.

In applications filed from Great Britain there
may be submitted a certified copy of the British
"provisional specification", which may also in some
cases be accompanied by a copy of the "complete
specification". The nature and function of the Brit-
ish provisional specification is described in an
article in the Journal of the Patent Office Society,
for November 1936, pages 770-774. According to
British law the provisional specification does not
need to contain a complete disclosure of the invent-
ion in the sense of R.S. 4888, but need only de-
scribe the general nature of the invention und
neither claims nor drawings are required. Conse-
quently, in considering such provisional specifi-
cations, the question of completeness of disclosure
is important.

If it is found that the British provisional
specification is insufficient, for lack of dis-
closure or other reason, reliance may then be had
on the complete specification if one has been pre-
sonted. the latter being treated as a different
application.

It may occasionally happen that the U.S. ap-
plication will be found entitled to the filing date
of the foreign upplication with respect to some
claims and not with respect to others. In such u
case the examiner's lotter will state that the ap-
plicant is considered entitled to the foreign dato
with respect to cortain nomed claims and is not
entitled with respect to other claims, with the
reasons for the letter statement being given.

Occasionally, an applicant may rely on two

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different foreign applications and may be en-
titled to the filing date of one of them with
respect to certain claims and to the other in
respect to other claims. In such a case, the
Examiner's letter will specify the olaims re-
lating to each of the applications.

4-1-15.
Public Law 690

Public Law 690 was enacted for the pur-
pose of restoring, to a certain extent, the
loss of priority rights which occurred as a
result of war conditions. This act extends, if
certain conditions are met, the twelve months
period ( six months in the case of designs)
provided in the second paragraph of 300. 4.67
R.S. In addition to all other legal require-
ments, the citizenship of the inventor becomes
material; that is, he must either be a citizen
of the United States or a citizen of a country
which grants reciprocal privileges to citizens
of the United States. The decision as to the
inclusion of a given country is determined by
the Commissioner of Patents after consultation
with the State Department, and notices are pub-
lished from time to time in the Official Gazette
listing countries which have been added. The
list, to date, is as follows :

### 4-1-15.1. Time Limits For Obtaining Benefit of Law

The extreme limit of the benefit of Pub-
lic Law 690 (as extended by Public Law 220) ap-
plies to cases filed abroad after Sept. 8, 1938,
and in this country on or before Feb. "29, 1948.
Sec. 4-1-15.2 for shorter poriods in some cases.
Request for priority, under the Act may be filed
at any time during the pendenoy of the U.S. ap-
plication.

Although Feb. 29, 1948 foll on a Sunday,
the Patent Office has ruled that applications
filed on the next following day, i.e., March 1,
1948, aro not entitled to the priority benefits
of the Act.

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<!-- PageHeader="4-1-15.2." -->

## Countries Granting Reciprocity

Time limit for filing applications in United

COUNTRY

States

Austria

February 29, 1948

Belgium

February 29, 1948

Brazil

December 31, 1946

Bulgaria

February 29, 1948

Canada

November 15, 1947

Czechoslovakia

February 29, 1948

Denmark

February 29, 1948

Finland

February 29, 1948

France

February 29, 1948 (1)

Great Britain

February 29, 1948

Holland

December 31, 1947 (2)

Hungary

February 29, 1948

Italy

February 29, 1948

Ireland

February 29, 1948

Luxembourg

February 29, 1948

New Zealand

February 9 1948

Norway

December 31, 1947

Palestine

February 29, 1948

Poland

February 29, 1948

Roumania

February 29, 1948

Spain

February 29, 1948

Sweden

February 29, 1948

Switzerland

February 29, 1948

Union of South Africa

February 29, 1948

(1) The supplementary agreement extending
date to February 29, 1948 (605 O.G. 20)
came into force February 27, 1948.

(2) The date is February 29, 1948 in the
case of section 3 of Public Law 690.

### 4-1-15.4 Allegation us to Citizenship in Reciprocating Country

An allegation as to citizenship in a coun-
try mrunting reciprocal privileges is sufficient.
Proof is not required unless there is some in-
consistency.

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### 4-1-15.5. Proof of The Contents of Foreign Application

In addition to citizenship, other conditions
ure imposed. As contrasted with the procedure in
the normal right of priority, proof of the contents
of the foreign application must be advanced by the
applicant.

4-1-15.6.
Effect on Term of Patent

Section 10 of Public Law 690 provides for the
shortening of the term of the United States patent
so that it will expire twenty years from the filing
date of the earliest application in any country. m
any of these cases where the priority date may be
different for different claims, the term of the patent
as a whole will be determined by the earliest foreign
application, since section 10 reads: "twenty years
from the filing date of the first application" and the
Patent Office will not specify different terms for
different claims in the same patent.

#### 4-1-15.7. When no Papers Have Been Filed

The Act specifically requires the applicant to
request the applicant to request the extended period
of priority and to supply certain papers. Until and
unless the required material is furnished, examiners
will act on applications in the usual way, that is,
they will cite and use whatever references und grounds
of rejection may be applicable, considering the actual
filing date of the application in the United States
as the only date to which it is entitled. However, if
it appears that the applicant is attempting or intends
to obtain the extended period of priority but is un-
aware of the conditions, his attention may be called
to such conditions.

In some cases there may be a statement thut
the applicant relies on a foreign filing date. The
Examiner should mention in his action that no reli-
ance can be placed on the foreign filing date until
and unless the requirements of Section 1 are met.

#### 4-1-15.8. Filing of Papers Does Not Excuse A Reply to An Action

While the papers may be filed during the pond-
ency of the application, applicants are not relieved
from the necessity of replying to Office uctions with-
in the statutory time limit and of making as complete

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a response as is ordinarily required.

4-1-15.9.

#### Requirements of the Statute

The statuto requires of those who wish the
extended period of priority under Section 1
the following:

(a) A request in writing;

(b) A copy of the original forcien
application, certified to by the
country in which filed ;

(c) A sworn translation thereof if not
in the English language;

(d )
An affidavit by the inventor in
certain cuses.

##### 4-1-15.9. The Request in Writing

The written request for the extended period
of priority need not be a formal .. por signed by
the inventor. It may be contained in the letter
of the attorney transmitting the papers or in some
other letter and no specific form is necessary.
It must appear definitely and without implication
that the applicant is seeking the benefit of
Section 1 of the Act, and preferably should specify
the foreign application und date, the benefit of
whose filing date is requested.

##### 4-1-15.9(b). Certified Copy of Foreign Application

The foreign a plication must be a copy of the
foreign application as filed and the certificate by
the for ien patent office must make this erioont, as
has been customary. In some instances a printed copy
of the patent as issued may be used. This is not. onf.
ficiont unless the certificate indicates that it is
a true copy of the application. In French cases, the
printed patent is practically always a duplicate of
the application us filed since mutat ntial amendments
are not permitted. Most countries, however, permit
amendment of the a plic tion and hence a copy of the
" fant is not proof of the ap lle tin as filed.

Section 1 also permits other evidence relating
to the origin i a plic: tion if the original Corsien
application has been detr >yed. The only "other evi-
dence" which has been considered is a certified copy.
For example, a copy of : Gorman anolic: tion certified
by the German Patent Office in the proper manner may

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have been filed in the Swiss or Dutch Patent Office.
A copy of these papers, certified to by tho Patent
Office of Switzerland or Holland as being a true
copy of the papers there filed, has been accepted
in appropriate cuses. Cases in which "other ovi-
denoe" is offered should be referred to the Super-
visory Examiners for consideration.

4-1-15.9(0).
Sworn Translation

A sworn translation if the foreign application
is not in the English language is also required.
This means a translation which is sworn to and not
a translation made by a so-called "sworn translator",
which phrase is used in some countries. Oaths taken
in foreign countries for use in this country need
to be authenticuted by a diplomatic officer of the
United States if not taken before such officer.

4-1-15.9(d).
Affidavit of Inventor

The statute further requires;

"If the foreign application was not made by
the inventor himself, an affidavit by the applicant
(in the U.S.) or patentee. (in the U.S. ) stating.
"that such application was filed for his (the in-
ventor's) benefit or on his behalf and that such
procedure is in accordance with the procedure in
the foreign country." (Parenthetical mutter added. )

The purpose of this requirement is to take
e re of the situation in which the foreign uppli-
oution was not filed by the inventor but by an a-
gul .. or representative as is permitted in some coun-
tries. In such cases the inventor, who is the appli-
cunt here, must muke the required affidavit.

Cases also arise in which the foreign appli-
cation was made by the assignee of the inventor.
The uffidavit, by the inventor, is likewise required
in such cases; the phrase "for his benefit or on his
behalf" then meaning that the application was filed
by the assignee in place of the inventor as permitted
by the law of the country.

If the United States patent has issued to
the assignee, the language of the statuto would
permit this affidavit to be taken by such assignee.

In some instances the foreign application may
have been filed jointly by the inventor and the
assignee as joint applicants as is permitted in

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some countries. An affidavit rill not be
required in these cases; the ford "himself"
is not takon to mean "alone". If the re-
lationship of the foreign applicants is not.
evident, an explanation may be required.

4-1-15.10.

Examiner Must Determine

Right To

Rely

On Foreign

#### Patent

Evon when det rmin tion of the right to
rely on the foreign application may not be
necessary for the purpose of overcoming a re-
forence, such determination is required in
esch instance where Applicant includes papers
po"tuining to Public Law 690, because by Section
10 of the Act the term of the patent is to be
appropriately adjusted, Section 4-1-15.6. If
the determin: tion is not needed to overco ? a
reference, it need not be done until the cuse
is ready for issue or all the clains : re allowed.
4-1-15.11 (a).
Action by the Examiner

When pupers ure received in un appli-
cution pending before the examiner (including
those applications awaiting uction by the ap-
plicant) such papers are to be entered in the
file und ure to be considered by the examiner
ut the time of the next regular action. No
acknowledgement need be made at the time of
receipt and if, for any reason, acknowledge-
ment is found to be necessary it should not
count as an action in the c: se. When the case
comes up for regular action the examiner should
examine the wape s for formel compliance with
the requirements.

In the case of : plic tions filed by
citizens of countries with respect to which
reciprocity he's not yet been announced, the
unaliment should be informed that the matter
of the right of priority is held in alayunce.

Until the case is ready for issue or
all the claims allovou (ox parte Qquayle 1935
C.D. 11 453 O.G. 213), the Examiner nood not deter-
mine whether the foreign as lie tion is for
the "same invention' is a Lied for in the
United States unless any statutory bir or
pertinent referenc : is found which would be
eliminated by the priority date. If any such

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statutory bur or reference is found, a com-
plete action on the right of priority us to
all 'he claims should be given.

If the application is placed in con-
dition for allowance having once been given
the benefit of the priority date and all
claims still relate to the "same invention,"
it may be passed to issue by the examiner
without aguin referring it to the Supervisory
Examiners for approval.

4 - 1-15. 11 (b) .
Examiner's Letter

The next regular Office letter, fol-
lowing filing of the papers, should include
a statement with reference to the papers un-
der Public Law 690 and said statement should
appear at the beginning of the letter. Where
the papers do not meet the formal require-
ments the particular deficiencies should be
noted. In those cases where the formal re-
quirements are satisfied but no ruling is
made on the question of "same invention, "
the following form is suggested :

FORM

Receipt is acknowledged of papers
on
9
194 , under Sec-
tion 1 of Public Law 690. These
papers have been placed of record
in the file as complying with the
formal requirements of the Act.
Determination of whether the claims
herein are for the sume invention
as that disclosed in the foreign
application is not made ut this
time.

4-1-15.11 (c).

Date Refused

In those cases where a ruling on the
matter of priority is mude and the de te is
refused, the reasons should be stated.
Where the applicant is found to be entitled
to the foreign filing dato, a statement should
be incorporated in the letter that the appli-
cant is entitled to the filing date of a par-
ticular foreign application for all or certain
specified claims. A form for such statement
could be as follows:

Applicant having complied
with the provisions of Sec-
tion 1, Public Law 690, ap-

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É.

FORM

proved august 8, 1946,
this a plication is pon-
sidered entitled to a pri-
ority date corresponding
to the filing date of the
application, filed in
on
,
03
®

to claims

The letter when written should be
submitted to the Supervisory Examiners for
review. If the letter is arproved and tho
applicant is entitled to the bendfits of
the Act, an identifying label will be at-
t: ched to the face of the file by the soc-
rotary to the Supervisory Examiners who will
also maintain n card index of all cases with
u note of the action tokon.

In those cases where a ruline on the
right of priority is not node until the case
is ready for issue or all the claims allowed,
the examiner should at that time state whether
or not the ap lic nt is entitled to the pri-
ority date. If the date is refused, the rea-
sons for so holding should bo stated. If
granted, a statement such as that ombracod
in the suggested form set forth in the
immediately preceding paragraph should be
employed.

4-1-15.11(d).
Allowed Application6

If un applic tion is in issue whon
the papers are received, the examiner should,
if the final foe has not been paid, borrow
the file from the Issue Division ona treat
it in the same manner as a ponding case, writ-
ing a letter and referring it to the Supervis-
ory Examiners for approval as above. If tho
final fue has been paid the examiner should,
if there is time, examine the papers promptly
and write a lotter in the same munner. Defer-
ment of the issue of the p: tont may be re-
quested if it is still possible. If the pu-
pers are received too Ite to take any of the
above actions, they should be referred to
the Supervisory Examiners.

4-1-15.12.
Applications on Appoul

If ppers are filed after an appeal
is ti kon, appropriate action my be taken by
the examiner if the examiner's statement hus

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not been written, and any rejection with-
drawn or the appeal forwarded as may be
appropriate. If the examiner's statemont
has been mailed the applic tion will be ro-
manded by the Board for consideration of
the papers.

4-1-15.13.
Applications In Interference

If the papers are received while an ap-
plication is involved in interference, they are
to be placed in the application file in the same
manner as amendments received during interference,
und appropriate action taken after the termination
of the interference.

If the papers are to be relied on for
proof of priority in any interference, the
party must act in the interference in uccord-
ance with interference rules and is subject
to whatever rules relating to motions, no-
tices, production of testimony, etc., may be
applicable.

4-1-14.
Application Oath

When the extended priority date is rrant-
ed, certain informalities or variations in the
customary application outh muy be permitted.
The date of execution of the oath may become
immaterial and variations as to the allow tion
of one year public tion, use, etc., correspond-
ing to the last paragraph of Section 1 of
Public Law 690 may be encountered. An outh such
as follows, as well as the customary outh, would
ordinarily be acceptable :

₱
the above
petitioner, being, duly sworn, de-
poses and says that he is a cit-
izon of
and a
resident of
, that
he verily bell ves himself to be
the original, first and sole in-
ventor of the improvement in
described
and claimed in the annexed speci-
fication; that he does not know
and does not beli ve that said in-
vention the over kno' n or used
before his invention or iscovery
`harof, or of niet or scribed

FORM

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in any printed publication in
any country before his invont-
ion or discovery theroof, or
prior to the filing of the up-
Liestion in (specify con :try )
upon which the right of priori-
ty of the present application is
based, or in public use or on
sale in the United States prior
to the filing of said application;
that said invention has not been
Fu tonted in any country foreign
to the United States on an appli-
cution filed by him or his local
representatives or assimns :nd
that no application for patent on
said invention hus beon filed by
him or his representatives or
assigns in any country foreign to
the United States, except as follows:
( List ail foreign applications :. nd
; tents )

4-1-15.15.

#### Submission of Cases to Supervisory Examiner

Applications wherein action is taken on a
request for the benefits of section 1 of Public
Law 500 should not be submitted to the Super-
visory Examiner for review of the priority pa-
pers unless and until suid benefits are given.

If the an lication is placed in condition
for allowance, having once been given the bone-
fit of the priority date and all the claims still
relate to the "some invention", it may be passed
to issue by the Examinor without arain referring
it to the Supervisory Examiners for approval.
4-1-16.
Fee-exempt, Government Owned

These terms, as well as "Act of 1863 ao li-
estion", apply to collections for which no
fee is required, according to the provisions of
the Act. >9 March 3, 1863, as amended. Sec. 8-8
.nd C-c-1.

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4-2.

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4-2-1.
In Specification

When an application is filed which in
the opinion of the Examiner is a division of,
a continuation of, a continuation-inpart of,
or a substitute for a previously filed appli-
cation, but which contains no reference in
the specification to such prior application,
the Examiner will require applicant to insert
the proper reference to the prior applica-
tion in the specification. If, when the case
is otherwise in condition for ullowance, this
requirement has not been complied with, nor
shown to have been improperly made, the pro-
per reference to the prior application will
be made by an Exeminer's amendment, and the
application passed to issue forthwith.

##### 4-2-2. Notation as to Parent Application on Jacket and in File of a Divisional, Continuation, Continuation-in-part, or Substitute Application

The identifying datu of a parent or prior
application must be given in the specification
und on the left margin of the jacket under
"Division of Application No.", in the case of
a DIVISION, & CONTINUATION, or a SUBSTITUTE
application, und in the specification only, in
the case of a continuation-in-part. In the
case of u continuation-in-part, the letters
C.P. will be stumpod on the outside of the
file jacket at the bottom thereof.

##### 4-2-3. On File Wrapper When Foreign Application is Acknowledged

Where applicant acknowledges a prior
foreign application, the country where filed
und the date of filing are noted at the bottom
of the face of the filo wrappor. Whore there
are two or more such ourlier foreim appli-
cutions, only the e: riiest filed on those is
noted, except that all foreign applications
filod more than twelve months prior to the
U.S. upolicution must be noted on the file
wrapper.

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4-2-4.
Foreign Patent Granted
After Date of Specification

An applicant will not be required in any
case to file a statement setting forth the data
of any foreign patent granted hi, or to others
with his knowledge or consent between the date
of execution of his se cific tion and the de to
of the payment of the final fee.

4-2-5.

### In Oath

As will be noted by reference to 4-1-14,
Rule 9.1 requires that the oath include a list
of the foreign countries in hich applications
have been filed by the applicant in this coun-
try, or by his legal representatives. If no
applications for patent h ve been filed in any
foreign country, the outh should so state.

4-2-6.
In Case of Reissues

Rule 22.9 requires that a notice be
placed in the file of an original patent for
which an application for reissue has been
filed. For the form employed for this notice
see Clerk's Manual, Sec. 500

## 4-2-7. Notice of Filing of Application Claiming Mutter Disclosed But not Claimed in Patent

When, after obtaining a patent, the pat-
entee files an up lication claiming subject
mutter disclosed but not claimed in his potent.
he is required to place a notice in the file
of the patent, as soon as the application has
received a Serial Number, to the effect that
such an application hes boon filed and to iuent-
ify the application in the notice by its Serial
Number and filing dato. Ho is also required to
identify In his ap lication the patent in which
the subject matter not af: imed is disclosed .
(Order 5200)

1-2-8.
Derogatory Remarks Prohibited

Applicant may refor to the riral state
of the art and the .dvance thereover made by
his invention, but he is not permitted to
make derogatory remarks concerning the invent-
ions of others or to designeto them by nome
unless to stato that he deciros to improve on

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the disclosure in a prior p tent or appli-
cution of common ownership or that he makes
no claim to the disclosure in a certain
application, also of the same ownership.

## 4-2-9. Data of Applications Referred to Must be Brought up to Dute

Where a copending application is rc-
ferred to in the specificution, the examiner
should ascertain whether said copending ap-
plication has matured into a patent and if so,
insert by examiner's amendment the number and
dute of the patent.

4-3.
Status of Applications

### 4-3-1. New

A "new" application is one that has not
yet received an action by the examiner.

4-3-2.
Amended

An "amended" or "old" application is
one that, having been acted on by the examiner,
has in turn been ucted on by the applicant in
response to the Examiner's action. The appli-
cunt's response may be confined to a traverse
of the action taken by the Examiner or may
include an umend ient of the application.

4-3-4.
Allowed or Issue

An allowed or issue upplication is one
which, having been examined, is passed for
issue as a patent on payment of the final fee.
Its status as an "allowed" cuse continues from
the date of allowance unless it is withdrawn
from issue or the final fee is paid und it
issues as a patent.

The files of allowed cuses are kept in
the Issue and Gazette Branch, arranged in the
order of dates of allowance.

4-3-5.
Abandoned

An abandoned application is, inter
ulia, one which is removed from the Office
docket of pending cases through formul aban-
donment by the applicant (acquiesced in by

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the assignee if there is one) or through
failure of applicant to take appropriate
action at some stage in the history of the
cuse, us by failing to re. rond to an Office
action within the statutory poriod for ro-
sponse, failure to issue within tho twolvo
months' period of forfeiture, or by failure
to file a brief in an appeal within the time
required. (Rule 32.3) A case may also become
abandoned through withdrawal of appeal to the
Board of Appeals more than six months after
the final rojection provided there are no
allowed claims, and no properly responsive
amendment has been seasonably filed.

Likewise it may become abandoned through
dismissal of appeal to C.C.P.A. or of suit in
equity. where there was not filed prior to
such dismissal or within six months from the
Board's decision an amendment putting the case
in condition for issue or fully responsive to
the Board's decision.

The Examiner has no authority to act
upon an application in which no response was
taken during the statutory or shortened peri-
od. However he may reverse his judgment as to
whether or not an amendment received during
such period was responsive und act on & case
of such character which he has previously
held abandoned.

4-3-5.1.
Incomplete

An application locking some of the os-
sential parts is termed an incomplete appli-
cation. (Sec. 7 1-9 and 7- 1-12. )

4-3-6.

#### Forfeited

A forfeited application is one which
had the status of an allowed case for six
months and on which the final fee was not
paid. (Rule 34.6). Its legal status during
the year dating from its forfeiture makes
possible its boing isaned as a patent on pe-
tition to the Commissioner . the petition bo-
ing supported by a v rified statement and
accompanied by the final fee and the petition
fee ($10).

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The six months' period within which the
final fee might have been paid having expired,
the file is returned by the Issue and Gazette
Branch to the examining division. The clerk
of the examining division takes out the draw-
ing, stumps it "Forfeited, " stamps the file
likewise, makes the proper entry in the regis-
ter, and forwards the file und drawing to the
proper section of the Record and Attorneys'
Room w' ich is under the supervision of the
Librarian. The application is recorded us
forfeited and filed away in the abandoned
files section. If not patented within eight-
een months from the date of allowance, the
forfeited case is then considered abandonod
as of the date it became forfeited (Rule 34.
6); and such abandoned application cannot be
revived upon petition. In this respect un &-
bandoned application that has p ssed through
the twelve months' period of forfeiture dif-
fers in status from an application that has
become abandoned under the provisions of Rule
19.1 and that can be revived under the pro-
visions of Rule 19.3. See also Sec. 3,
Public Law 690.

4-3-7.
Examiners to Answer "Status Letters"

Simple letters of inquiry regarding the
status of applications will be transmitted
from the Register, Correspondence und from the
Muil Branch to the examining divisions for di-
rect action.

Such letters will be stomped "Status
Letters."

In cases of allowed arplications, a
memorandum should be pinned to the inquiry
with a statement of date of notice of allow-
ance, and transmitted to the Issue Branch
for its appropriate action. This Franch
will notify the inquirer of the date of the
notice of allowance and the status of the
application with respect to payment of th .:
fianl fee and forfeiture. If the correspond-
ent is not entitled to the information, in
view of Rule 3.4 of the Rules of Practice,
he should be so informed.