(b) If an applicant in an ex parte case has taken an appeal to the U. S. Court of Customs and Patent Appeals, he thereby waives his right to proceed under 35 U. S. C. 145.

(c) If a defeated party to an interference proceeding has taken an appeal to the U. S. Court of Customs and Patent Appeals, and any adverse party to the interference shall, within twenty days after the appellant shall have filed notice of the appeal to the court (§ 1.302), file notice with the Commissioner that he elects to have all further proceedings conducted as provided in 35 U. S. C. 146, certified copies of such notices will be transmitted to the U. S. Court of Customs and Patent Appeals for such action as may be necessary. The notice of election must be served as provided in § 1.248.

(35 U.S.C. 141, 145, 146)

§ 1.304 Time for appeal or civil action.

The time for filing the notice and reasons of appeal to the U. S. Court of Customs and Patent Appeals (§ 1.302) or for commencing a civil action (§ 1.303) is sixty days from the date of the decision of the Board of Appeals or the Board of Patent Interferences. If a petition for rehearing or reconsideration is filed within thirty days after the date of the decision of the Board of Appeals or Board of Patent Interferences, the time is extended to thirty days after action on the petition. No petition for rehearing or reconsideration filed outside the time specified herein after such decision, nor any proceedings on such petition shall operate to extend the period of sixty days hereinabove provided. The times specified herein are calendar days. If the last day of the time specified for appeal or commencing a civil action falls on a Saturday, Sunday or legal holiday, the time is extended to the next day which is neither a Saturday, Sunday nor a holiday. If a defeated party to an interference has taken an appeal to the U. S. Court of Customs and Patent Appeals and an adverse party has filed notice under 35 U. S. C. 141 that he elects to have all further proceedings conducted under 35 U. S. C. 146 (§ 1.303 (c)), the time for filing a civil action thereafter is specified in 35 U. S. C. 141. (35 U.S.C. 141, 142, 145, 146)

§ 1.312

Amendments after allowance.

Amendments after the notice of allowance of an application will not be permitted as a matter of right. However, such amendments may be made if filed not later than the date the issue fee is paid, on the recommendation of the primary examiner, approved by the Commissioner, without withdrawing the case from issue.

[34 F.R. 6844, Apr. 24, 1969]

§ 1.313 Withdrawal from issue.

(a) After the notice of allowance of an application is sent, the case will not be withdrawn from issue except by approval of the Commissioner, and if withdrawn for further action on the part of the Office, a new notice of allowance will be sent if the application is again allowed.

(b) When the issue fee or that portion thereof specified in the notice of allowance has been paid, and the patent to be issued has received its date and number, the application will not be withdrawn from issue on account of any mistake or change of purpose of the applicant, his attorney or his agent, nor for the purpose of enabling the inventor to procure a foreign patent, nor for any other reasons except mistake on the part of the Office, or because of fraud or illegality in the application, or for interference.

[30 F.R. 12844, Oct. 8, 1965, as amended at 34 F.R. 18858, Nov. 26, 1969]

§ 1.314 Issuance of patent.

If payment of the issue fee or that portion thereof specified in the notice of allowance is timely made, the patent will issue in regular course. [30 F.R. 12844, Oct. 8, 1965]

§ 1.315 Delivery of patent.

The patent will be delivered or mailed on the day of its date to the attorney or agent of record, if there be one; or if the attorney or agent so request, to the patentee or assignee of an interest therein; or, if there be no attorney or agent, to the patentee or to the assignee of the entire interest, if he so request. (35 U.S.C. 151)

§ 1.316 Application abandoned for failure to pay issue fee.

(a) If the fee specified in the notice of allowance is not paid within 3 months from the date of the notice the application will be regarded as abandoned. Such an abandoned application will not be considered as pending before the Patent Office.

(b) If the issue fee or portion thereof specified in the notice of allowance is not timely paid but is submitted, with the fee for delayed payment, within 3 months of its due date with a verified showing or statement in the form of a declaration of sufficient cause for the late payment, it may be accepted by the Commissioner as though no abandonment had ever occurred.

[30 F.R. 12844, Oct. 8, 1965, as amended at 34 F.R. 18858, Nov. 26, 1969]

§ 1.317 Delayed payment of balance of the issue fee; lapsed patents. Any remaining balance of the issue fee is to be paid within 3 months from the date of notice thereof and, if not paid, the patent lapses at the termination of the 3-month period. If this balance is not timely paid but is submitted, with the fee for delayed payment, within 3 months of its due date with a verified showing or statement in the form of a declaration of sufficient cause for the late payment, it may be accepted by the Commissioner as though no lapse had ever occurred.

[30 F.R. 12844, Oct. 8, 1965, as amended at 34 F.R. 18858, Nov. 26, 1969]

or claims which are disclaimed, and be signed by the person making the disclaimer, who shall state therein the extent of his interest in the patent. A disclaimer not a disclaimer of a complete claim or claims may be refused recordation. A notice of the disclaimer is published in the Official Gazette and attached to the printed copies of the specification. In like manner any patentee or applicant may disclaim or dedicate to the public the entire term, or any terminal part of the term, of the patent, granted or to be granted. See § 1.21 for fee.

CORRECTION OF ERRORS IN PATENT

§ 1.322 Certificate of correction of Office mistake.

(a) A certificate of correction under 35 U.S.C. 254 may be issued at the request of the patentee or his assignee. Such certificate will not be issued at the request or suggestion of anyone not owning an interest in the patent, nor on motion of the Office, without first notifying the patentee (including any assignee of record) and affording him an opportunity to be heard.

(b) If the nature of the mistake on the part of the Office is such that a certificate of correction is deemed inappropriate in form, the Commissioner may issue a corrected patent in lieu thereof as a more appropriate form for certificate of correction, without expense to the patentee.

(35 U.S.C. 254) [24 F.R. 10332, Dec. 22, 1959, as amended at 34 F.R. 5550, Mar. 22, 1969]

§ 1.323 Certificate of correction of applicant's mistake.

Whenever a mistake of a clerical or typographical nature or of minor character which was not the fault of the Office, appears in a patent and a showing is made that such mistake occurred in good faith, the Commissioner may, upon payment of the required fee, issue a certificate of correction, if the correction does not involve such changes in the patent as would constitute new matter or would require re-examination. [34 F.R. 5550, Mar. 22, 1969]

§ 1.331

ASSIGNMENTS AND RECORDING

Recording of assignments.

(a) Assignments, including grants and conveyances, of patents or applications for patents under 35 U.S.C. 261, will be recorded in the Patent Office. Other instruments affecting title to a patent or application for patent, and licenses, even though the recording thereof may not serve as constructive notice under 35 U.S.C. 261, will be recorded as provided in this section or in the discretion of the Commissioner.

(b) No instrument will be recorded which is not in the English language and which does not amount to an assignment, grant, mortgage, lien, incumbrance, or license, or which does not affect the title of the patent or invention to which it relates, and which does not identify the patent or application to which it relates, except as ordered by the Commissioner.

(c) An instrument relating to a patent should identify the patent by number and date (the name of the inventor and title of the invention as stated in the patent should also be given); an instrument relating to an application should identify the application by serial number and date of filing (the name of the inventor and title of the invention as stated in the application should also be given) but if an assignment is executed concur

rently with or subsequent to the execution of the application but before the application is filed or before its serial number and filing date are ascertained, it should adequately identify the application, as by its date of execution and name of the inventor and title of the invention; so that there can be no mistake as to the patent or application intended. (35 U.S.C. 261)

§ 1.332 Receipt and recording.

Assignments are recorded in regular order as promptly as possible, and then transmitted with the date and identification of the record stamped thereon to the persons entitled to them. The date of the record is the date of the receipt of the assignment at the Office in proper form and accompanied by the full legal fee for recording specified in 35 U.S.C. 41(a) 10. (35 U.S.C. 261) [24 F.R. 10332, Dec. 22, 1959, as amended at 34 F.R. 18858, Nov. 26, 1969]

§ 1.333 Conditional assignments.

Assignments which are made conditional on the performance of certain acts or events, as the payment of money or other condition subsequent, if recorded in the Office are regarded as absolute assignments for Office purposes until cancelled with the written consent of both parties or by the decree of a competent court. The Office has no means for determining whether such conditions have been fulfilled.

(35 U.S.C. 261)

§ 1.334 Issue of patent to assignee.

In case of an assignment of the entire interest in the invention and application, or of the entire interest in the patent to be granted, the patent will normally issue to the assignee. If the assignee should hold an undivided part interest, the patent will normally issue jointly to the inventor and the assignee. If it is desired that the patent so issue the assignment in either case must first have been recorded, and at a day not later than the date payment is made of the issue fee or portion thereof specified in the notice of allowance. At the time of payment of the issue fee, a statement must be furnished indicating whether or not an assignment has been filed with the Patent Office. In the event an assignment has been filed, such statement must

include the name of the assignee and indicate whether or not an acknowledgment of a recorded assignment has been received from the Patent Office.

[34 F.R. 17772, Nov. 4, 1969]

RECOGNITION OF ATTORNEYS AND AGENTS

AUTHORITY: §§ 1.341 to 1.348 also issued under 35 U.S.C. 31, 32.

§ 1.341 Registration of attorneys and agents.

A register of attorneys and a register of agents are kept in the Patent Office on which are entered the names of all persons recognized as entitled to represent applicants before the Patent Office in the preparation and prosecution of applications for patent. Registration in the Patent Office under the provisions of the regulations in this part shall only entitle the persons registered to practice before the Patent Office.

(a) Attorneys at law. Any attorney at law in good standing admitted to practice before any United States Court or the highest court of any State or Territory of the United States who fulfills the requirements and complies with the provisions of these rules may be admitted to practice before the Patent Office and have his name entered on the register of attorneys.

(b) Agents. Any citizen of the United States not an attorney at law who fulfills the requirements and complies with the provisions of these rules may be admitted to practice before the Patent Office and have his name entered on the register of agents.

NOTE: All persons registered prior to November 15, 1938, were registered as attorneys, whether they were attorneys at law or not, and such registrations have not been changed.

(c) Requirements for registration. No person will be admitted to practice and registered unless he shall apply to the Commissioner of Patents in writing on a prescribed form supplied by the Commissioner and furnish all requested information and material; and shall establish to the satisfaction of the Commissioner that he is of good moral character and of good repute and possessed of the legal and scientific and technical qualifications necessary to enable him to render applicants for patents valuable

service, and is otherwise competent to advise and assist them in the presentation and prosecution of their applications before the Patent Office. In order that the Commissioner may determine whether a person seeking to have his name placed upon either of the registers has the qualifications specified, satisfactory proof of good moral character and repute, and of sufficient basic training in scientific and technical matters must be submitted and an examination which is held from time to time must be taken and passed. Each application for admission to the examination for registration must be accompanied by the prescribed fee (see § 1.21). The taking of an examination may be waived in the case of any person who has actively served for four years in the examining corps of the Patent Office.

(d) Registration of firms. Any firm, the individual members of which are each registered on the register of attorneys, may have its name entered upon the register of attorneys. Any firm, one of the individual members of which is registered on the register of agents and each of the remaining individual members are registered either on the register of attorneys or the register of agents, may have its name entered on the register of agents. If the membership of the firm is changed, application must be made for registration of the firm as changed. Every application must be accompanied by the prescribed fee for registration of a firm (see § 1.21).

(e) Foreign patent attorneys and agents. Any foreign patent attorney or agent not a resident of the United States who shall file proof to the satisfaction of the Commissiorer that he is registered and in good standing before the patent office of the country in which he resides and practices, and is possessed of the qualifications stated in paragraph (c) of this section, may be registered on the register of agents as entitled to represent applicants located in such country before the United States Patent Office in the presentation and prosecution of applications: Provided, That the patent office of such country allows substantially reciprocal privileges to those admitted to practice before the United States Patent Office. Such registration shall continue only during the period that the conditions specified obtain.

(f) Government employees. Officers and employees of the United States who are disqualified by statute (18 U.S.C. 203, 205) from practicing as attorneys or agents in proceedings or other matters before Government departments or agencies, may not be registered, and if any registered attorney or agent becomes such an officer or employee, his name on the register shall be endorsed as inactive during the period of such employment, but officers or employees whose official duties require the preparation and prosecution of applications for patent may be registered (on compliance with the regulations in this part) or recognized to practice, to the extent necessary to carry out their official duties.

(g) Former examiners. No person who has served in the examining corps of the Patent Office will be registered after termination of his services, nor, if registered before such service, be reinstated, unless he undertakes (1) not to prosecute or aid in any manner in the prosecution of any application pending in any examining group during his period of service therein; and (2) not to prepare or prosecute nor to assist in any manner in the preparation or prosecution of any application of another filed within 2 years after the date he left such group, and assigned to such group, without the specific authorization of the Commissioner. Associated and related classes in other groups may be required to be included in the undertaking or designated classes may be excluded. In case application for registration or reinstatement is made after resignation from the Office, the applicant will not be registered, or reinstated, if he has prepared or prosecuted, or assisted in the preparation or prosecution of any such application as indicated in this paragraph. (See further 18 U.S.C. 207.)

(h) Oath and registration fee. Before his name may be entered on the register of attorneys or on the register of agents, every applicant for registration must, after his application is approved, subscribe and swear to an oath or make a declaration prescribed by the Commissioner of Patents and pay the prescribed registration fee. (See § 1.21 (h).)

Any person not registered and not entitled to be recognized under § 1.341 as an attorney or agent to represent applicants generally may, upon a showing of circumstances which render it necessary or justifiable, be recognized by the Commissioner to prosecute as attorney or agent a specified application or applications, but this limited recognition shall not extend further than the application or applications specified.

§ 1.343 Persons not registered or rec ognized.

No person or firm not registered or specifically recognized as provided in § 1.342 will be permitted to prosecute applications of others before the Patent. Office.

(a) The use of advertising, circulars, letters, cards, and similar material to solicit patent business, directly or indirectly, is forbidden as unprofessional conduct, and any person engaging in. such solicitation, or associated with or employed by others who so solicit, shall be refused recognition to practice before the Patent Office or may be suspended, excluded or disbarred from further practice.

(b) The use of simple professional letterheads, calling cards, or office signs, simple announcements necessitated by opening an office, change of association, or change of address, distributed to clients and friends, and insertion of listings in common form (not display) in. a classified telephone or city directory..