owner must be served on the requester in the manner provided in § 1.248. The document must reflect service or the document may be refused consideration by the Office. The active participation of the reexamination requester ends with the reply pursuant to § 1.535, and no further submissions on behalf of the reexamination requester will be acknowledged or considered. Further, no submissions on behalf of any third parties will be acknowledged or considered unless such submissions are (1) in accordance with § 1.510 or (2) entered in the patent file prior to the date of the order to reexamine pursuant to § 1.525. Submissions by third parties, filed after the date of the order to reexamine pursuant to § 1.525, must meet the requirements of and will be treated in accordance with § 1.501(a).

§ 1.552 Scope of reexamination in reexamination proceedings.

(a) Patent claims will be reexamined on the basis of patents or printed publications.

(b) Amended or new claims presented during a reexamination proceeding must not enlarge the scope of the claims of the patent and will be examined on the basis of patents or printed publications and also for compliance with the requirements of 35 U.S.C. 112 and the new matter prohibition of 35 U.S.C. 132.

(c) Questions other than those indicated in paragraphs (a) and (b) of this section will not be resolved in a reexamination proceeding. If such questions are discovered during a reexamination proceeding, the existence of such questions will be noted by the examiner in an Office action, in which case the patent owner may desire to consider the advisability of filing a reissue application to have such questions considered and resolved.

§ 1.555 Duty of disclosure in reexamination proceedings.

The owner of a patent involved in a reexamination proceeding who is aware, or becomes aware, of patents or printed publications material to the reexamination which have not been previously made of record in the patent file must bring such patents or

printed publications to the attention of the Office. A prior art statement, preferably in accordance with § 1.98, should be filed within two months of the date of the order for reexamination, or as soon thereafter as possible in order to bring such patents or printed publications to the attention of the Office.

§ 1.560 Interviews in reexamination proceedings.

(a) Interviews in reexamination proceedings pending before the Office between examiners and the owners of such patents or their attorneys or agents of record must be had in the Office at such times, within Office hours, as the respective examiners may designate. Interviews will not be permitted at any other time or place without the authority of the Commissioner. Interviews for the discussion of the patentability of claims in patents involved in reexamination proceedings will not be had prior to the first official action thereon. Interviews should be arranged for in advance. Requests that reexamination requesters participate in interviews with examiners will not be granted.

(b) In every instance of an interview with an examiner, a complete written statement of the reasons presented at the interview as warranting favorable action must be filed by the patent owner. An interview does not remove the necessity for response to Office actions as specified in § 1.111.

§ 1.565 Concurrent office proceedings.

(a) In any reexamination proceeding before the Office, the patent owner shall call the attention of the Office to any prior or concurrent proceedings in which the patent is or was involved such as interferences, reissue, reexaminations, or litigation and the results of such proceedings.

(b) If a patent in the process of reexamination is or becomes involved in interference proceedings or a reissue application is filed for the patent, or litigation is instituted, the Commissioner shall determine whether or not to stay the reexamination, reissue or interference proceeding. If reexamination is stayed for the conduct of a reissue

proceeding, the reissue proceeding shall take into account prior art provided by the requester for reexamination and the reexamination requester will be granted at least the same degree of participation in the reissue proceeding which the requester would have had in the reexamination proceeding. Any reexamination proceeding stayed for the conduct of a reissue proceeding shall be terminated by the grant of the reissued patent.

(c) If reexamination is ordered while a prior reexamination proceeding is pending, the reexamination proceedings will be consolidated and result in the issuance of a single certificate under § 1.570.

CERTIFICATE

§ 1.570 Issuance of reexamination certificate after reexamination proceedings. (a) Upon the conclusion of reexamination proceedings, the Commissioner will issue a certificate in accordance with 35 U.S.C. 307 setting forth the results of the reexamination proceeding and the content of the patent following the reexamination proceeding.

(b) A certificate will be issued in each patent in which a reexamination proceeding has been ordered under § 1.525. Any statutory disclaimer filed by the patent owner will be made part of the certificate.

(c) The certificate will be mailed on the day of its date to the patent owner at the address as provided for in § 1.33(c). A copy of the certificate will also be mailed to the requester of the reexamination proceeding.

(d) If a certificate has been issued which cancels all of the claims of the patent, no further Office proceedings will be conducted with regard to that patent or any reissue applications or reexamination requests relating there

to.

(e) If the reexamination proceeding is terminated by the grant of a reissued patent as provided in § 1.565(b), the reissued patent will constitute the reexamination certificate required by this section and 35 U.S.C. 307.

(f) A notice of the issuance of each certificate under this section will be

published in the Official Gazette on its date of issuance.

PART 2-RULES OF PRACTICE IN TRADEMARK CASES

CODIFICATION NOTE: Part 2 is placed in a separate grouping of parts pertaining to trademarks. It appears on page 143 of this volume.

PART 3-FORMS FOR PATENT CASES

Sec.

3.1 [Reserved]

3.11 Oath to accompany application for patent.

3.11a Declaration to accompany application for patent.

3.12 Oath to accompany application for patent, by an administrator (or executor).

3.12a Declaration to accompany application for patent by an administrator (or executor).

3.13 Oath not accompanying application. 3.13a Declaration not accompanying appli

cation.

3.14 Supplemental oath for amendment presenting claims for matter disclosed but not originally claimed.

3.14a Supplemental declaration for amendment presenting claims for matter disclosed but not originally claimed. 3.16 Combined oath and power of attorney in original application.

3.16a Combined declaration and power of attorney in original application.

3.17 Oath in division or continuation application.

3.17a Declaration in division or continuation application.

3.18 Oath in copending application containing additional subject matter. 3.18a Declaration in copending application containing additional subject matter. 3.22 Design patent application; specification.

3.23 Design patent application; oath. 3.23a Design patent application; declaration.

3.47 Interference; notice of taking testimony.

3.48 Interference; form of deposition. 3.49 Interference; certificate of officer. 3.50 Waiver of patent rights.

3.51 Application transmittal letter. 3.52 Amendment transmittal letter. 3.53 Terminal disclaimer in application. 3.54 Division-continuation program application transmittal form.

3.55 A suggeted format for the certificate under 37 CFR 1.8(a) to be included with the correspondence.

3.56 Oath to be filed with United States Designated Office under 35 U.S.C. 371(c)(4).

3.57 Declaration to be filed with United States Designated Office under 35 U.S.C. 371(c)(4).

3.61 Symbols for draftsmen.

AUTHORITY: 35 U.S.C. 6, unless otherwise

noted.

Source: 42 FR 27883, June 1, 1977, unless otherwise noted.

NOTE: The following forms illustrate the manner of preparing various papers to be filed in the Patent and Trademark Office. Applicants and other parties will find their business facilitated by following them. In special situations such alterations as the circumstances may render necessary may be made provided they do not depart from the requirements of Part 1 of this chapter or of the statute. Before using any form the pertinent sections of Part 1 and sections of the statute should be studied carefully.

§3.1 [Reserved]

§3.11 Oath to accompany application for patent.

As a below named inventor, being duly sworn (or affirmed), I depose and say that:

My residence, post office address and citizenship are as stated below next to my name; that

I verily believe I am the original, first and sole inventor (if only one name is listed below) or a joint inventor (if plural inventors are named below) of the invention entitled: described and claimed

in the attached specification; that

I do not know and do not believe that the same was ever known or used in the United States of America before my or our invention thereof, or patented or described in any printed publication in any country before my or our invention thereof or more than one year prior to this application, that the same was not in public use or on sale in the United States of America more than one year prior to this application, that the invention has not been patented or made the subject of an inventor's certificate issued before the date of this application in any country foreign to the United States of American on an application filed by me or my legal representatives or assigns more than twelve months prior to this application, that I acknowledge my duty to disclose information of which I am aware which is material to the examination of this application, and that no application for patent or inventor's certificate on this invention has been filed in any country foreign to the United States of America prior to this application by me or my legal representatives or assigns, except as follows:

Full name of sole or first Inventor

Inventor's signature
Date:

Residence
Citizenship

Post Office Address

Full name of second joint Inventor, if any

Inventor's signature

Date:

Residence
Citizenship
Post Office Address

(Supply similar information and signature for third and subsequent joint inventors.)

SS:

Sworn to and subscribed before me this day of 19——.

[SEAL]

(Signature of notary or officer)

(Official character)

§3.11a Declaration to accompany application for patent.

As a below named inventor, I hereby declare that:

My residence, post office address and citizenship are as stated below next to my name; that

I verily believe I am the original, first and sole inventor (if only one name is listed below) or a joint inventor (if plural inventors are name below) of the invention entitled: described and claimed

in the attached specification; that

I do not know and do not believe that the same was ever known or used in the United States of America before my or our invention thereof, or patented or described in any printed publication in any country before my or our invention thereof or more than one year prior to this application, that the same was not in public use or on sale in the United States of America more than one year prior to this application, that the invention has not been patented or made the subject of an inventor's certificate issued before the date of this application in any country foreign to the United States of America on an application filed by me or my legal representatives or assigns more than twelve months prior to this application, that I acknowledge my duty to disclose information of which I am aware which is material to the examination of this application, and that no application for patent or inventor's certificate on this invention has been filed in any country foreign to the United States of America prior to this application by me or my legal representatives or assigns, except as follows:

I hereby declare that all statements made herein of my own knowledge are true and that all statements made on information and belief are believed to be true; and further that these statements were made with the knowledge that willful false statements and the like so made are punishable by fine or imprisonment, or both, under Section 1001 of Title 18 of the United States Code and that such willful false statements may jeopardize the validity of the application or any patent issued thereon.

Full name of sole or first Inventor

Inventor's signature

patented or described in any printed publication in any country before the said invention thereof, or more than one year prior to this application, or in public use or on sale in the United States of America more than one year prior to this application; that said invention has not been patented or made the subject of an inventor's certificate issued before the date of this application in any country foreign to the United States of America on an application filed by the said (B) or his or her legal representatives or assigns more than twelve months prior to this application; that I acknowledge my duty to disclose information of which I am aware which is material to the examination of this application, and that no application for patent or inventor's certificate on said invention has been filed by the said (B) or his or her representatives or assigns in any country foreign to the United States of America, except as follows:

(A)

(Signature) Administrator, etc.

NOTE. (A) Name of administrator or executor; (B) Name of deceased inventor.

§3.12a Declaration to accompany application for patent, by an administrator (or executor).

I, (A)

last

hereby declare that I am a citizen of and a resident of that I am the administrator of the estate (or executor of the will and testament) of (B) deceased, late a citizen of and resident of that I verily believe the said (B) to be the original, first and sole inventor of the improvement in described and claimed in the foregoing specification; that I do not know and do not believe that the same was ever known or used in the United States of America before the invention thereof by the said (B) or patented or described in any printed publication in any country before the said invention thereof, or more than one year prior to this application, or in public use or on sale in the United States of America more than one year prior to this application; that said invention has not been patented or made the subject of an inventor's certificate issued before the date of this application in any country foreign to the United States of America on an application filed by the said (B) -—, or his or her legal representatives or assigns more than twelve months prior to this application; that I acknowledge my duty to disclose information of which I am aware which is material to the examination of this application, and that no application for patent or inventor's certificate on said invention has been filed by the said (B) or his or her representatives or assigns in any country foreign to the United States of America, except as follows:

I hereby declare further that all statements made herein of my own knowledge are true and that all statements made on information and belief are believed to be true; and further that these statements were made with the knowledge that willful false statements and the like so made are punishable by fine or imprisonment, or both, under Section 1001 of Title 18 of the United States Code and that such willful false statements may jeopardize the validity of the application or any patent issuing there

on.

§3.13 Oath not accompanying application.

As a below named inventor, being duly sworn (or affirmed), I depose and say that: My residence, post office address and citizenship are as stated below next to my name; that

I verily believe I am the original, first and sole inventor (if only one name is listed below) or a joint inventor (if plural inventors are named below) of the invention entitled: described and claimed in the specification of application Serial No. filed -; that I do not know and do not believe that the same was ever known or used in the United States of America before my or our invention thereof, or patented or described in any printed publication in any country before my or our invention thereof or more than one year prior to this application, that the same was not in public use or on sale in the United States of America more than one year prior to this application, that the invention has not been patented or made the subject of an inventor's certificate issued before the date of this application in any country foreign to the United States of America on an application filed by me or my legal representatives or assigns more than twelve months prior to this application, that I acknowledge my duty to disclose information of which I am aware which is material to the examination of this application, and that no application for patent or inventor's certificate on this invention has been filed in any country foreign to the United States of America prior to this application by me or my legal representatives or assigns, except as follows:

Full name of sole or first Inventor

(A)

(Signature)

Date:

NOTE. (A) Name of administrator or executor; (B) Name of deceased inventor.

(Supply similar information and signature for third and subsequent joint inventors.)

SS: