Significant Aspects of the New Rules effective December 1, 1997 (Second in a Series)

December 1, 1997 – Firm News

Effective December 1, 1997


Recently we sent you information concerning the new procedures for continuation applications under the new rules. The following are additional comments and practical suggestions involving other portions of the rules that we believe likely to be of most interest to our clients. There are many other technical changes in the rules which we do not mention here. However, if you have questions about any aspect of the rules, please feel free to contact us.

Declaration (§ 1.63)

Under the new rules, the declaration submitted by the inventors will be relied upon in a different way than in the past. Specifically, the U. S. PTO will rely upon the declaration for determining the names of the inventors and inventor's post office address. Particular attention should therefor be placed on making sure that the declaration is complete and accurate in naming the inventors and providing proper address information. We note that the U. S. PTO will continue to list the inventors names in the same order in which they occur in the declaration. Since patents are often referred to by the name of the first inventor, it is important to make sure that the appropriate inventor's name appears first on the declaration.

Although it is not mentioned in the new rules, recent case law makes it clear that an inventor must understand the content of the declaration. For this reason we have available declarations translated into various foreign languages. We recommend that these foreign language declarations be used if there is any question at all regarding the inventor's complete understanding of the English language.

Deceptive Intent Issues

In the past the U. S. PTO required submissions of detailed statements in some instances to confirm that representations made by applicants were true and were made without deceptive intent. These statements imposed a significant burden both on the applicants and on U. S. PTO examiners. The new rules eliminate many of the requirements for such statements; however, this does not mean that applicants can be any less vigilant in making sure that all statements filed are true and accurate. In fact, the opposite is true. The responsibility now lies more than ever on practitioners to avoid filing any papers containing facts or statements that are false or misleading.

Small Entity Status

Small entity status continues to exist, permitting certain applicants to pay reduced fees. Under the new rules (§ 1.28(a)), payment of the small entity fee in any continuing application will be equivalent to confirming that that application is entitled to small entity status. At the same time, the rule confirms that the filing of any continuing application requires a new determination by the applicant that the application is entitled to small entity status.

U. S. case law makes it clear that improper payment of small entity fees can result in the unenforceability of patents on the basis of inequitable conduct. Thus it is very important to make sure that any client seeking to pay the small entity fees is truly entitled to be classified as a small entity. We recommend not paying small entity fees if there is any doubt in this matter because of the risk of patent unenforceability if an error is made. The definition of "small entity" is complex and there are many practical difficulties in determining whether or not small entity status applies. As a consequence, claiming small entity status is inherently risky. Please let us know if you have questions about small entity status.


The appeal procedure has been modified to make it more efficient. The new rules (§ 1.193(a)(2)) prohibit the inclusion of a new ground of rejection in an examiner's answer. Under the new rules the examiner must reopen prosecution to add any new ground of rejection. Furthermore, the appellant now has a right to file a timely reply brief, regardless of whether the examiner's answer raises new points of argument. This gives the appellant the right to make the last submission prior to review by the Board of Patent Appeals and Interferences, since Supplemental Answers by the examiner are no longer permitted. We recommend the filing of such a reply brief in most instances as a significant advantage to the appellant.