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Federal Register / Vol. 77, No. 157 / Tuesday, August 14, 2012 / Rules and Regulations48817sroberts on DSK5SPTVN1PROD with RULESof the non-English language provisionalapplication will not be required in theprovisional application. See § 1.78(a) forthe requirements for claiming thebenefit of such provisional applicationin a nonprovisional application.* * * * *■ 24. Section 1.53 is amended byrevising the introductory text ofparagraphs (c) and (c)(3), andparagraphs (d)(2)(iv), (f), and (h) to readas follows:§ 1.53 Application number, filing date, andcompletion of application.* * * * *(c) Application filing requirements—Provisional application. The filing dateof a provisional application is the dateon which a specification as prescribedby 35 U.S.C. 112(a), and any drawingrequired by § 1.81(a) are filed in thePatent and Trademark Office. Noamendment, other than to make theprovisional application comply with thepatent statute and all applicableregulations, may be made to theprovisional application after the filingdate of the provisional application.* * * * *(3) A provisional application filedunder paragraph (c) of this section maybe converted to a nonprovisionalapplication filed under paragraph (b) ofthis section and accorded the originalfiling date of the provisionalapplication. The conversion of aprovisional application to anonprovisional application will notresult in either the refund of any feeproperly paid in the provisionalapplication or the application of anysuch fee to the filing fee, or any otherfee, for the nonprovisional application.Conversion of a provisional applicationto a nonprovisional application underthis paragraph will result in the term ofany patent to issue from the applicationbeing measured from at least the filingdate of the provisional application forwhich conversion is requested. Thus,applicants should consider avoidingthis adverse patent term impact by filinga nonprovisional application claimingthe benefit of the provisionalapplication under 35 U.S.C. 119(e)(rather than converting the provisionalapplication into a nonprovisionalapplication pursuant to this paragraph).A request to convert a provisionalapplication to a nonprovisionalapplication must be accompanied by thefee set forth in § 1.17(i) and anamendment including at least one claimas prescribed by 35 U.S.C. 112(b), unlessthe provisional application underparagraph (c) of this section otherwisecontains at least one claim as prescribedby 35 U.S.C. 112(b). The nonprovisionalapplication resulting from conversion ofa provisional application must alsoinclude the filing fee, search fee, andexamination fee for a nonprovisionalapplication, the inventor’s oath ordeclaration, and the surcharge requiredby § 1.16(f) if either the basic filing feefor a nonprovisional application or theinventor’s oath or declaration was notpresent on the filing date accorded theresulting nonprovisional application(i.e., the filing date of the originalprovisional application). A request toconvert a provisional application to anonprovisional application must also befiled prior to the earliest of:* * * * *(d) * * *(2) * * *(iv) Includes the request for anapplication under this paragraph, willutilize the file jacket and contents of theprior application, including thespecification, drawings and theinventor’s oath or declaration from theprior application, to constitute the newapplication, and will be assigned theapplication number of the priorapplication for identification purposes;and* * * * *(f) Completion of applicationsubsequent to filing—Nonprovisional(including continued prosecution orreissue) application.(1) If an application which has beenaccorded a filing date pursuant toparagraph (b) or (d) of this section doesnot include the basic filing fee, thesearch fee, or the examination fee, or ifan application which has been accordeda filing date pursuant to paragraph (b)of this section does not include theinventor’s oath or declaration (§ 1.63,§ 1.64, § 1.162 or § 1.175), and theapplicant has provided acorrespondence address (§ 1.33(a)), theapplicant will be notified and given aperiod of time within which to pay thebasic filing fee, search fee, andexamination fee, and pay the surchargeif required by § 1.16(f) to avoidabandonment.(2) If an application which has beenaccorded a filing date pursuant toparagraph (b) of this section does notinclude the basic filing fee, the searchfee, the examination fee, or theinventor’s oath or declaration, and theapplicant has not provided acorrespondence address (§ 1.33(a)), theapplicant has two months from thefiling date of the application withinwhich to pay the basic filing fee, searchfee, and examination fee, and pay thesurcharge required by § 1.16(f) to avoidabandonment.VerDate Mar2010 17:28 Aug 13, 2012 Jkt 226001 PO 00000 Frm 00043 Fmt 4701 Sfmt 4700 E:\FR\FM\14AUR6.SGM 14AUR6(3) The inventor’s oath or declarationin an application under § 1.53(b) mustalso be filed within the period specifiedin paragraph (f)(1) or (f)(2) of thissection, except that the filing of theinventor’s oath or declaration may bepostponed until the application isotherwise in condition for allowanceunder the conditions specified inparagraphs (f)(3)(i) and (f)(3)(ii) of thissection.(i) The application must be an original(non-reissue) application that containsan application data sheet in accordancewith § 1.76 identifying:(A) Each inventor by his or her legalname;(B) A mailing address where theinventor customarily receives mail, andresidence, if an inventor lives at alocation which is different from wherethe inventor customarily receives mail,for each inventor.(ii) The applicant must file an oath ordeclaration in compliance with § 1.63,or a substitute statement in compliancewith § 1.64, executed by or with respectto each actual inventor no later than theexpiration of the time period set in the‘‘Notice of Allowability’’ to avoidabandonment, when the applicant isnotified in a ‘‘Notice of Allowability’’that an application is otherwise incondition for allowance. The timeperiod set in a ‘‘Notice of Allowability’’is not extendable. See § 1.136(c). TheOffice may dispense with the noticeprovided for in paragraph (f)(1) of thissection if an oath or declaration under§ 1.63, or a substitute statement under§ 1.64, executed by or with respect toeach actual inventor has been filedbefore the application is in condition forallowance.(4) If the excess claims fees requiredby § 1.16(h) and (i) and multipledependent claim fee required by§ 1.16(j) are not paid on filing or on laterpresentation of the claims for which theexcess claims or multiple dependentclaim fees are due, the fees required by§ 1.16(h), (i) and (j) must be paid or theclaims canceled by amendment prior tothe expiration of the time period set forreply by the Office in any notice of feedeficiency. If the application size feerequired by § 1.16(s) (if any) is not paidon filing or on later presentation of theamendment necessitating a fee oradditional fee under § 1.16(s), the feerequired by § 1.16(s) must be paid priorto the expiration of the time period setfor reply by the Office in any notice offee deficiency in order to avoidabandonment.(5) This paragraph applies tocontinuation or divisional applicationsunder paragraphs (b) or (d) of thissection and to continuation-in-part