ability, the requested record to such extent shall be made available for inspection as described in paragraph (a) of this section. To the extent that the decision is adverse to the request, the reasons for the denial shall be stated. A decision upon review completed as provided herein shall constitute the final decision and action of the Patent and Trademark Office as to the availability of a requested record, except as may be required by court proceedings initiated pursuant to ⚫ 5 U.S.C. 552(a)(3). Reconsiderations resulting in final decisions as prescribed herein shall be indexed and made available in the search room of the Patent Reference Branch.

(c) Procedures applicable in the event of a subpoena, order, or other compulsory process or demand of a court or other authority shall be those set forth in section 7 of Department Order 64 (32 FR 9734, July 4, 1967).

(Sec. 1, 66 Stat. 793, 81 Stat. 54; 5 U.S.C. 552, 35 U.S.C. 6)

[32 FR 13812, Oct. 4, 1967, as amended at 34 FR 18857, Nov. 26, 1969]

(t) For special service to expedite furnishing items or services ahead of regular order: On orders for copies of U.S. patents and trademark registrations, in addition to the charge for the copies, for each copy ordered...

.50

$1.50

(b) For photocopies or other reproductions of records, drawings, or printed material, per page of material copied

.30

On all other orders or requests for which special service facilities are available, in addition to the regular charge, a special service charge equal to the amount of regular charge; minimum special service charge per order or request.... (u) Deposit account:

1.00

(v) For items and services, that the Commissioner finds may be supplied, for which fees are not specified by statute or by this section, such charges as may be determined by the Commissioner with respect to each such item or service.

(w) For preparing an international-type search report of an international-type search made at the time of the first action on the merits in a national patent application..

$25.

NOTE.-The Patent and Trademark Office does not require that a formal report be prepared of an international-type search in order to obtain a search fee refund in a later filed international application. For

fees relating to processing of international applications, see § 1.445.

(66 Stat. 796; 35 U.S.C. 41; Pub. L. 94-131, 89 Stat. 685)

[24 FR 10332, Dec. 22, 1959, as amended at 25 FR 4679, May 27, 1960; 30 FR 6391, May 7, 1965; 30 FR 12844, Oct. 8, 1965; 31 FR 7284, May 19, 1966; 34 FR 2207, Feb. 14, 1969; 36 FR 12617, July 2, 1971; 40 FR 57358, Dec. 9, 1975; 43 FR 20462, May 11, 1978]

§ 1.22 Fees payable in advance.

Fees and charges payable to the Patent and Trademark Office are required to be paid in advance, that is, at the time of making application for any action by the Office for which a fee or charge is payable.

§ 1.23 Method of payment.

All payments of money required for Patent and Trademark Office fees, including fees for the processing of international

applications (§ 1.445), should be made in U.S. specie, Treasury notes, national bank notes, post office money orders, or by certified check. If sent in any other form, the Office may delay or cancel the credit until collection is made. Money orders and checks must be made payable to the Commissioner of Patents and Trademarks. Remittances from foreign countries must be payable and immediately negotiable in the United States for the full amount of the fee required. Money sent by mail to the Patent and Trademark Office will be at the risk of the sender; letters containing money should be registered. (Pub. L. 94-131, 89 Stat. 685)

[43 FR 20462, May 11, 1978]

§ 1.24 Coupons.

Coupons in denominations of twenty cents and fifty cents are sold by the Patent and Trademark Office for the convenience of regular purchasers of U.S. patents, designs, and trademark registrations; these coupons may not be used for any other purpose. The 20cent coupons are sold individually and in books of 50 with stubs for record for $10. The 50-cent coupons are sold individually and in pads of 10 for $5 and in books of 50 with stubs for record for $25. These coupons are good until used; they may be transferred but cannot be redeemed.

NOTE: Public document coupons issued by the Superintendent of Documents cannot be used in the Patent and Trademark Office, nor can the coupons issued by the Patent and Trademark Office be used at the Government Printing Office or elsewhere.

[30 FR 12844, Oct. 8, 1965, as amended at 34 FR 18857, Nov. 26, 1969]

§ 1.25 Deposit accounts.

(a) For the convenience of attorneys, agents, and the general public in ordering services offered by the Office, copies of records, etc., special deposit accounts may be established in the Patent and Trademark Office. A minimum deposit of $50 or more, depending on the activity of the individual account, is required. At the close of each month's business, a statement will be rendered. A remittance must be made promptly upon receipt of the statement to cover the value of items or services charged to the account and thus restore the account to its established normal deposit value. An amount sufficient to cover all services, copies, etc., requested must always be on deposit. A service charge will be assessed for each month that the balance at the end of the month is below $40.

(b) Filing, issue, appeal, international-type search report, international application processing, and petition fees may be charged against these accounts.

(Pub. L. 94-131, 89 Stat. 685)

[40 FR 57359, Dec. 9, 1975 and 43 FR 20462, May 11, 1978]

§ 1.26 Refunds.

Money paid by actual mistake or in excess, such as a payment not required by law, will be refunded, but a mere change of purpose after the payment of money, as when a party desires to withdraw his application or to withdraw an appeal, will not entitle a party to demand such a return. Refund of a portion of any international search fee paid to the Patent and Trademark Office may be made where the prior art search made during the subsequent examination of a national application is wholly or partly based on the earlier international search made in the international application for

which the search fee was paid. The amount of the refund will be as determined by the examiner according to the value of the prior international search made by the Patent and Trademark Office as an International Searching Authority, as 90 percent, 45 percent, or 0 percent of the international search fee. If the amount of the refund is not a multiple of $5, it will be rounded to the next higher multiple of $5. (Note § 1.446 for refund of the search fee in an international application.) Amounts of 10 cents or less will not be returned unless specifically demanded, within a reasonable time, nor will the payer be notified of such amount; amounts over 10 cents but less than $1 may be returned in postage stamps, and other amounts by check.

(Pub. L. 94-131, 89 Stat. 685)
[43 FR 20462, May 11, 1978]

Subpart B-National Processing
Provisions

PROSECUTION OF APPLICATION AND APPOINTMENT OF ATTORNEY OR AGENT § 1.31 Applicants may be represented by an attorney or agent.

An applicant for patent may file and prosecute his own case, or he may be represented by an attorney or agent authorized to practice before the Patent and Trademark Office in patent cases. The Patent and Trademark Office cannot aid in the selection of an attorney or agent.

§ 1.32 Prosecution by assignee.

The assignee of record of the entire interest in an application for patent is entitled to conduct the prosecution of the application to the exclusion of the inventor.

§ 1.33 Correspondence respecting patent applications and proceedings.

(a) The residence and post office address of the applicant must appear in the oath or declaration if not stated elsewhere in the application. The applicant may also specify and an attorney or agent of record may specify a correspondence address to which communications about the application are to be directed. All notices, official let

ters, and other communications in the case will be directed to the correspondence address or, if no such correspondence address is specified, to an attorney or agent of record (see § 1.34(b)), or, if no attorney or agent is of record, to the applicant, or to any assignee of record of the entire interest if the applicant or such assignee so requests, or to an assignee of an undivided part if the applicant so requests, at the post office address of which the Office has been notified in the case. Amendments and other papers filed in the application must be signed: (1) By the applicant, or (2) if there is an assignee of record of an undivided part interest, by the applicant and such assignee, or (3) if there is an assignee of record of the entire interest, by such assignee, or (4) by an attorney or agent of record, or (5) by a registered attorney or agent not of record who acts in a representative capacity under the provisions of § 1.34(a). Double correspondence with an applicant and his attorney or agent, or with more than one attorney or agent, will not be undertaken. If more than one attorney or agent be made of record and a correspondence address has not been specified, correspondence will be held with the one last made of record.

(b) An applicant who has not made of record a registered attorney or agent may be required to state whether he received assistance in the preparation or prosecution of his application, for which any compensation or consideration was given or charged, and if so, to disclose the name or names of the person or persons providing such assistance. This includes the preparation for the applicant of the specification and amendments or other papers to be filed in the Patent and Trademark Office, as well as other assistance in such matters, but does not include merely making drawings by draftsmen or stenographic services in typing papers.

[36 FR 12617, July 2, 1971]

§ 1.34 Recognition for representation.

(a) When a registered attorney or agent acting in a representative capacity appears in person or signs a paper

in practice before the Patent and Trademark Office in a patent case, his personal appearance or signature shall constitute a representation to the Patent and Trademark Office that, under the provisions of this part and the law, he is authorized to represent the particular party in whose behalf he acts. In filing such a paper, the attorney or agent should specify his registration number with his signature. Further proof of authority to act in a representative capacity may be required.

(b) When an attorney or agent shall have filed his power of attorney, or authorization, duly executed by the person or persons entitled to prosecute the application, he is a principal attorney of record in the case. A principal attorney or agent so appointed, may appoint an associate attorney or agent who shall also then be of record.

[36 FR 12617, July 2, 1971]

§ 1.36 Revocation of power of attorney or authorization; withdrawal of attorney or agent.

A power of attorney or authorization of agent may be revoked at any stage in the proceedings of a case, and an attorney or agent may withdraw, upon application to and approval by the Commissioner. An attorney or agent, except an associate attorney or agent whose address is the same as that of the principal attorney or agent, will be notified of the revocation of his power of attorney or authorization, and the applicant will be notified of the withdrawal of the attorney or agent. An assignment will not of itself operate as a revocation of a power or authorization previously given, but the assignee of the entire interest may revoke previous powers and be represented by an attorney or agent of his own selection. [36 FR 12617, July 2, 1971]

WHO MAY APPLY FOR A PATENT

AUTHORITY: §§ 1.41 to 1.47 also issued under 35 U.S.C. 111, 116, 117, 118.

§ 1.41 Applicant for patent.

(a) A patent must be applied for and the application papers must be signed and the necessary oath or declaration executed by the actual inventor in all

cases, except as provided by §§ 1.42, 1.43, and 1.47. (See § 1.60)

(b) Unless the contrary is indicated, the word "applicant" when used in these sections refers to the inventor, joint inventors who have applied for a patent, or to the person mentioned in §§ 1.42, 1.43, or 1.47 who has applied for a patent in place of the inventor. [24 FR 10332, Dec. 22, 1959, as amended at 36 FR 12690, July 3, 1971]

§ 1.42 When the inventor is dead.

In case of the death of the inventor, the legal representative (executor, administrator, etc.) of the deceased inventor may sign the application papers and make the necessary oath or declaration, and apply for and obtain the patent. Where the inventor dies during the time intervening between the filing of his application and the granting of a patent thereon, the letters patent may be issued to the legal representative upon proper intervention by him.

[24 FR 10332, Dec. 22, 1959, as amended at 29 FR 18503, Dec. 29, 1964]

§ 1.43 When the inventor is insane or legally incapacitated.

In case an inventor is insane or otherwise legally incapacitated, the legal representative (guardian, conservator, etc.) of such inventor may sign the application papers and make the necessary oath or declaration, and apply for and obtain the patent.

[24 FR 10332, Dec. 22, 1959, as amended at 29 FR 18503, Dec. 29, 1964] § 1.44 Proof of authority.

In the cases mentioned in §§ 1.42 and 1.43, proof of the power or authority of the legal representative must be recorded in the Patent and Trademark Office or filed in the application before the grant of a patent.

§ 1.45 Joint inventors.

(a) Joint inventors must apply for a patent jointly and each must sign the application papers and make the required oath or declaration: neither of them alone, nor less than the entire number, can apply for a patent for an invention invented by them jointly, except as provided in § 1.47.

(b) If an application for patent has been made through error and without any deceptive intention by two or more persons as joint inventors when they were not in fact joint inventors, the application may be amended to remove the names of those not inventors upon filing a statement of the facts verified by all of the original applicants, and an oath or declaration as required by § 1.65 by the applicant who is the actual inventor, provided the amendment is diligently made. Such amendment must have the written consent of any assignee.

(c) If an application for patent has been made through error and without any deceptive intention by less than all the actual joint inventors, the application may be amended to include all the joint inventors upon filing a statement of the facts verified by, and an oath or declaration as required by § 1.65 executed by, all the actual joint inventors, provided the amendment is diligently made. Such amendment must have the written consent of any assignee.

[24 FR 10332, Dec. 22, 1959, as amended at 29 FR 18503, Dec. 29, 1964]

§ 1.46 Assigned inventions and patents.

In case the whole or a part interest in the invention or in the patent to be issued is assigned, the application must still be made by the inventor or one of the persons mentioned in §§ 1.42, 1.43, or 1.47. However, the patent may be issued to the assignee or jointly to the inventor and the assignee as provided in § 1.334.

§ 1.47 Filing by other than inventor.

(a) If a joint inventor refuses to join in an application for patent or cannot be found or reached after diligent effort, the application may be made by the other inventor on behalf of himself and the omitted inventor. Such application must be accompanied by proof of the pertinent facts and must state the last known address of the omitted inventor. The Patent and Trademark Office shall forward notice of the filing of the application to the omitted inventor at said address. Should such notice be returned to the Office undelivered, or should the ad

dress of the omitted inventor be unknown, notice of the filing of the application shall be published in the Official Gazette. The omitted inventor may subsequently join in the application on filing an oath or declaration of the character required by § 1.65. A patent may be granted to the inventor making the application, upon a showing satisfactory to the Commissioner, subject to the same rights which the omitted inventor would have had if he had been joined.

(b) Whenever an inventor refuses to execute an application for patent, or cannot be found or reached after diligent effort, a person to whom the inventor has assigned or agreed in writing to assign the invention or who otherwise shows sufficient proprietary interest in the matter justifying such action may make application for patent on behalf of and as agent for the inventor. Such application must be accompanied by proof of the pertinent facts and a showing that such action is necessary to preserve the rights of the parties or to prevent irreparable damage, and must state the last known address of the inventor. The assignment, written agreement to assign or other evidence of proprietary interest, or a verified copy thereof, must be filed in the Patent and Trademark Office. The Office shall forward notice of the filing of the application to the inventor at the address stated in the application. Should such notice be returned to the Office undelivered, or should the address of the inventor be unknown, notice of the filing of the application shall be published in the Official Gazette. The inventor may subsequently join in the application on filing an oath or declaration of the character required by § 1.65. A patent may be granted to the inventor upon a showing satisfactory to the Commissioner.

[24 FR 10332, Dec. 22, 1959, as amended at 29 FR 18503, Dec. 29, 1964; 34 FR 18857, Nov. 26, 1969]

THE APPLICATION

§ 1.51 General requisites of an application.

(a) Applications for patents must be made to the Commissioner of Patents